2 May 2018

T 2101/12 - Non-technical features

Key points

  • Catchword: "Article 54(2) EPC does not exclude non-technical disclosures from the prior art, in disagreement with Catchword 2 of T 172/03." 
  • T 172/03, Headnote "  anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56" 
  • The present decision makes me wonder what happened in T 172/03 to cause the Board in that decision to decide that disregard a prior art document, and to pronounce it as a rule in a headnote.
  • The Board in T 172/03 was certainly not applicant-friendly and was in fact refusing a patent application for a business method. The written decision T 172/03 is however somewhat difficult to follow. In para. 5, the Comvik approach is briefly discussed. In para. 6, it is emphasized that the skilled person is a software engineer and not a businessman. In para. 7, this is connected to the Examining Division being composed of technically qualified Examiners. The core of the decision is however in para. 8. Therein, the Board disagrees with the ED, who took as closest prior art an existing "order placing mechanism", i.e. a known business method. The Board then recalls that in T 641/00 (Comvik), r. 2, it was said that the FR and DE version of Article 56 refer to (in English) that inventive step means that " if a skilled person cannot derive it in an obvious manner from the state of technology." The Board decides that the closest prior art is " a distributed information system comprising multiple general purpose computers at different locations and connected by a communication network". The distinguishing features are functional features, and the functional features of the claim are accodingly put in the "requirements specification" of the Comvik approach. The Board then finds that "the claimed technical solution does not go beyond the concept of a mere automation of constraints imposed by the business-related aspects. Such automation using conventional hardware and programming methods must be considered obvious to a skilled person." 
  • In the present case, the Board starts from what it considers to be common general knowledge of what a notary does, and reasons that the way of automation specified in claim 1 is obvious. The Board cites no document evidencing the work procedures of notaries. "The board however observes that the appellant has at no moment disputed that the [notary work process] above is indeed common general knowledge." 
  • As a comment, in the present case, claim 1 is apparently a 1:1 automation of a known business method. But perhaps a next time the business method is slightly adapted to the use of internet. The advantage of the normally used Comvik approach is that any business method features are put in the requirements specification, even if the (notional) business person has come up with a quite creative business method. I don't think that Comvik requires disregarding business method features of the prior art. Taking into account that a claim is not inventive if it is obvious from any document, it is not necessary to exclude "business method" prior art to say that a general purpose computer is the " closest" prior art (i.e. suitable starting point) for the problem-solution approach, more in particular for the Comvik approach. 

EPO T 2101/12 - link

6.3 Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. The notary in such a case has the function of a "trusted third party". It is considered well known, and has not been denied by the appellant, that the whole process in the notary's office would typically comprise the following steps:
(a) A notary receives a document, which will need to be signed, from its author;
(b) the notary authenticates the document, e.g. by providing it with a seal;
(c) the notary presents ("displays") the document to a signatory (not necessarily, and indeed typically not, the same as the author), so that the signatory can gain knowledge of the document's content before signing it;
(d) the signatory signs the document;
(e) the notary authenticates the document together with the signature, i.e. the notary authenticates the fact that the given document was signed by the given signatory, linking the document and the signature together.
6.4 The appellant has submitted, both in the response to the summons (under I.A.1(a)) and during the oral proceedings, that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03.

6.5 According to the board, the wording of Article 54(2) EPC is clear and requires no interpretation:
"The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application" (emphasis added by the board).
Article 54(2) EPC itself contains no limitation according to which a non-technical process, such as the signing of a contract at the notary's office, may not be considered state of the art.
6.6 The board agrees with the appellant that this opinion is not in line with Catchword 2 of T 172/03 (as also relied upon in the Guidelines for Examination G-VII, 2), unless one interprets the expression "technically relevant" in that Catchword in a trivial manner. The board however considers that the interpretation of Article 54(2) EPC given in T 172/03 is incorrect.
In T 172/03, Reasons 9, it is said that a consistent construction of the patentability provisions "requires the term 'everything' in Article 54(2) EPC to be understood as concerning such kind of information which is relevant to some field of technology". According to the board, however, the legislator would have used a different term if such meaning had indeed been intended. A more appropriate expression would then for instance have been "all technical information". Instead, the wording of Article 54(2) EPC is unambiguous in that it contains an unqualified "everything", in all three languages ("alles" in German and "tout" in French).
No provision in the EPC requires said term to be interpreted differently. In particular, the appearance of the terms "Stand der Technik" and "├ętat de la technique" in respectively the German and the French version of Article 54(2) does not require it. It is precisely Article 54(2) which defines what should be understood as "state of the art", and because it is a definition one cannot first ignore the definition, by saying that the term "state of the art" should be interpreted in some sense, and only then start to read the definition in the light of that interpretation. This is however exactly what is done in T 172/03 Reasons 9.
As to the statement in T 172/03 Reasons 9 that it "can hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art to take notice of everything, in all fields of human culture and regardless of its informational character", the board observes that there is in this respect no difference with "technical" prior art, i.e. a skilled person will not take notice of any prior art, regardless of whether it is technical, if it does not contain information that is useful to him or her as a skilled person. On the other hand, if some generally known information is useful, even if it should be designated "non-technical", there is no reason why the skilled person would ignore it.
6.7 The board further notes that the statement made in Catchword 2 of T 172/03 is not part of established jurisprudence. Most notably, this limited view on prior art has not been mentioned in the summary of the pertinent case law given in T 154/04 DUNS (see point 5 of the reasons), which G 3/08 has referred to for its summary of the case law (see point 10.7.1 and 10.13.1 of the reasons).
6.8 The board is consequently of the opinion that the process referred to under 6.3 above constitutes valid prior art under Article 54(2) EPC and may be used as the starting point in an inventive step analysis.
7. Inventive step; Article 56 EPC
7.1 The board holds that the subject-matter of claim 1 of auxiliary request VI is not inventive.
7.2 According to the appellant (Response to the summons, I.A,1(c)), the starting point chosen by the board for its inventive step analysis is a legal process and the skilled person would therefore try to end up with an improved legal process. From this reasoning it is apparent that the appellant considers the skilled person to be a legally skilled person. The board however considers that the human activity referred to under 6.3 above is well known and it sees no reason why a person skilled in the field of automation would not look at it from his or her own technical perspective.
7.3 The desire to automate human activities is a constant one. The board therefore deems it obvious that at some point the skilled person will want to automate said activity.
7.4 The board furthermore considers it obvious that a skilled person wishing to implement such automation will use commonly available tools for this purpose.
7.5 It will firstly be necessary to foresee a device that performs the function of the notary. In an automation context, this would typically be a computer (which may for instance be called "trusted (third) party server") that will be deemed trustworthy to the users of the system.
7.6 Another obvious automation measure, to be used instead of physical presence of the signatory at the notary's office, is the provision of a network that will connect a computer device used by the signatory to the trusted party server.
7.7 The skilled person further knows that the recording of a signature can be automated by means of dedicated "signature devices", such as disclosed e.g. in D1 (see abstract: "graphic tablet digitizer"). In order for the trusted party server to receive this signature, the signature device should be configured for communication with the trusted party server.
7.8 The technical equivalent of the human notary receiving the document from its author and authenticating it by providing it with a first authentication sign, will be that the trusted party server receives the document from its author and authenticates it electronically by providing it with a first authentication sign.
The board considers it obvious, in accordance with the established practice in the field of electronic authentication, to use a PKI (Public Key Infrastructure) signature for this purpose.
7.9 Just like a human notary shows to the signatory the document that needs to be signed, the "trusted party server" should display the document on a display that is part of the computer device used by the signatory, so that the latter can read it.
7.10 The signatory will then use the signature device to sign for instance as an indication of agreement with the contents of the document.
7.11 The "trusted party server", acting as notary, will receive the electronic signature, provide the document with this signature, and provide the document provided with the electronic signature with a second authentication sign for linking the document sent and the electronic signature together, the second authentication sign, in accordance with the general practice in the field of electronic authentication, being a second PKI signature.
7.12 The skilled person will therefore, as a result of a straightforward automation of a known process, arrive at the subject-matter of claim 1 of auxiliary request VI without demonstrating any inventive activity. The subject-matter of that claim is consequently not inventive; Article 56 EPC.
7.13 Claim 1 of auxiliary requests III to V is broader than that of auxiliary request VI. The above argument concerning lack of inventive step therefore also applies to claim 1 of the other requests, the subject-matter of which is consequently also not inventive; Article 56 EPC.
7.14 The appellant stressed during the oral proceedings that the presence of a notary is essential during the process and that a skilled person would therefore consider the use of a videoconference facility. The board observes firstly that the crucial notary tasks, i.e. identification of the signatory (which may be done by verifying its electronic signature) and witnessing the signing process are already carried out by the trusted party server. Secondly, the board points out that the wording of claim 1 does not exclude that the signing session be held in the context of a videoconference, with physical presence of the parties and a notary.
7.15 The appellant has objected (response to the summons, I.A.1(d)) that the approach used in "COMVIK" (T 641/00) should be applied to assess the inventive step of a claim containing a mix of technical and non-technical features. In the present case, however, the board holds that the skilled person starts from a prior art method with zero technical features, the problem which consists in the automation of that method being solved entirely with technical means. The question whether the board's approach deviates from that used in T 641/00 therefore does not arise.
7.16 According to the appellant (response to the summons, V.), the European Patent Office has the burden of proving the content of the common general knowledge it relies on, and for the present appeal the consequence should be that the case be remitted to the first instance in order to discuss inventive step in the light of such further evidence.
The board however observes that the appellant has at no moment disputed that the process mentioned under 6.3 above is indeed common general knowledge. The board further considers that the process as described above contains sufficient detail to allow the skilled person to arrive at the claimed subject-matter using otherwise nothing more than conventional automation techniques.
The board therefore considers that no documentary evidence is required to prove the extent of the cited common general knowledge, let alone that it would be required to remit the case for a continuation of the inventive step discussion at the first instance in the light of such further evidence.

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