T 0119/11 - 16 Years to refuse a business method

Key points

• PCT file in 1999, request for entry EP phase 18.05.2001, oral proceedings ED 27.05.2010, grounds appeal 02.12.2010,  oral proceedings of the Board 06.10.2017, written decision 25.01.2018.
• "As the application puts it, there is a need for an email system to track [] and store email messages, with other documents, in a database to insure that the email messages retained in the database may be the email messages an organization chooses to retain as their official records  [.] The invention stores what it calls an electronic tag that uniquely identifies an email (or other document). The tag is based on the user's profile and workstation. Based on the information in the tag, emails are monitored for compliance with the organization's policies."
• The Board applies the Comvik approach: "As claim 1 does not go beyond the definition of features that are strictly necessary to fulfil a non-technical requirement, the combination of features it defines would have been obvious for the technically-skilled person who has the task of fulfilling it."
• As a comment, perhaps the long pendency of the application is harmless (in view of the small chances of a patent ever being granted). On the other hand, the applicant has paid the renewal fees so there must have been some economic value in the possible monopoly on the claimed method.

EPO T 0119/11 - link

Reasons for the Decision

Background

1. The invention is concerned with emails written in the workplace. There may be legal requirements to retain certain emails, just as there may be personal or business interests in deleting them. Other emails should, for a variety of reasons, be deleted after a given period of time. Organisations need to manage the storage of emails to ensure that those that have to be kept are kept, and those that have to be deleted are deleted.

2. As the application puts it, there is a need for an email system to track, sort, index, manage, authenticate, purge and store email messages, with other documents, in a database to insure that the email messages retained in the database may be the email messages an organization chooses to retain as their official records versus unorganized messages that may have the potential to create a liability for the organization (published application, page 2, lines 15 - 19).

3. The invention stores what it calls an electronic tag that uniquely identifies an email (or other document). The tag is based on the user's profile and workstation. Based on the information in the tag, emails are monitored for compliance with the organization's policies.

Inventive step

4. The principles on the basis of which inventive step is to be assessed are well established and set out in section I.D of Case Law of the Boards of Appeal of the European Patent Office, 8th Edition, 2016.

An important factor in the present case is the treatment of technical features that implement some non-technical requirement. The relevant subsection of the Case Law Book is 9.1. The Comvik approach is discussed in subsection 9.1.3.

The main request

5. Claim 1 defines a system that is able to store an email in a database, send the email to a recipient, generate and store an electronic tag, and determine, on the basis of information in the tag, when the email may or should be deleted.

6. The application starts from a workplace email system. It can send and store emails. Emails can be kept or deleted. This is a reasonable starting point for the assessment of inventive step.

7. The invention differs from that starting point in that it provides means (an electronic tag) for storing, for each email, the data relevant to a deletion policy and for extracting that data (a policy compliance monitor) to determine when the email should be deleted. The data is based on information in a user's profile, the workstation used, and a reference code that might be no more than an identifier of a sort of email and of the user (page 10, lines 29 - 32 of the published application).

8. The policies themselves, and in particular the choice of what information (such as a user's job description), are not technical. They are a matter of law or of business or perhaps of personal preferences. Under the Comvik approach, the implementation of such policies can be given to the technically-skilled person as a non-technical requirement.

9. The appellant's argument regarding a stable record of information gathered at the time an email is sent does not reflect the claim, which does not specify any particular time for the creation of the tag or the gathering of information in it. However, even if the argument were accepted, it would not help, because the choice of what information is to be stored is dictated by the non-technical policy.

10. In the Board's view, the requirement given to the technically-skilled person is to provide for the tracking of emails so that they can be linked with the correct deletion policy.

11. To fulfil this requirement, there is no choice but to provide means for identifying which emails belong to which policies. That requires the storage of some data. The system will require some modification to do that, and the technically-skilled person might have to solve some technical problem in making the modifications. The means of storage and monitoring, however, are specified only to the extent that they are able to implement the non-technical requirements. There is no specification of how they are implemented technically. Thus, the modifications necessitated by the invention are just those imposed by the non-technical requirements. The implementation does not solve any technical problem beyond fulfilling the requirement given to the technically-skilled person.

12. As claim 1 does not go beyond the definition of features that are strictly necessary to fulfil a non-technical requirement, the combination of features it defines would have been obvious for the technically-skilled person who has the task of fulfilling it.

13. The main request, therefore, cannot be allowed (Article 56 EPC).