T 1722/12 - Placing ads

Key points

• The Board applies the Comvik approach to an invention about placing ads online.
• " The invention concerns advertising. [] there may be times when the advertiser is lacking the resources to serve those customers adequately. For example, the advertiser's contact center may be understaffed, [] This may lead to long waiting times[]. The invention addresses this problem by dynamically placing advertisements taking account of the current availability of the advertiser's resources at the contact center [] For example, [if] the contact center is reachable via [] telephone, then, the contact information in the advertisement is updated to reflect this (it will [show] a telephone number). Conversely, if there is no agent available to answer calls, the advertisement may include static contact information, such as a Web address."

• "The Board judges that the selection and serving of advertisements based on the availability of the advertiser's resources at the contact center goes in the non-technical requirement specification. Starting from a standard networked computer system, the technical problem is how to implement the requirement specification." 

EPO T 1722/12 - link

2. Main request, inventive step

2.1 The examining division's reasoning and the arguments in the grounds of appeal focused on method claim 10. The Board will do the same. Nevertheless, the same reasons are applicable also to system claim 1.

2.2 The examining division considered that the method in claim 10 of the main request contained a mixture of technical and non-technical features. The established approach for dealing with such mixed-type inventions is the "COMVIK approach" (see T 641/00 - Two identities / COMVIK, OJ 2003, 352).

In the COMVIK approach, the non-technical features do not contribute to inventive step. Instead, they may be part of the problem in the form of a non-technical requirement specification given to the skilled person to implement.

2.3 In the present case, the disputed point concerns which features of the invention are non-technical, i.e. what goes in the non-technical requirement specification.

The examining division argued that the following steps in claim 10 were non-technical:

(a) storing advertisements;
(b) monitoring availability of the advertiser's resources at the contact center; and
(c) serving advertisements to users based on at least in part on information about the advertiser's resources determined in step (b).

The appellant argued that all of the features in claim 10 were technical, because they all interacted for solving the technical problem of managing the communication load on the contact center.

2.4 The Board does not fully agree with the approach taken by the examining division. Indeed, step (a) involves storing data in a data storage, which is a technical activity involving technical means.

In T 1463/11 - "Universal merchant platform / CardinalCommerce", it was held that a non-technical requirement specification cannot include any technical means, no matter how trivial or notorious. Those features should instead be evaluated for obviousness as part of the technical implementation. The Board shares this view. Therefore, while the advertisement itself is cognitive content, which belongs in the non-technical requirement specification, the step of storing it is part of the technical implementation.

2.5 On the other hand, the Board does not agree with the appellant that selecting and serving advertisements solves a technical problem.

Advertising is meant to attract customers to a business. By placing an advertisement, the advertiser is hoping to increase customer demand. That is what advertising is all about. Conversely, by not placing the advertisement, the effect of the advertisement is not there. Naturally, the effect of a particular advertisement on customer demand is neither certain, nor predictable; it depends on the customer's subjective response to the advertisement as well as on the product or service in question. If advertising has any objective, credible effect at all, it is not a technical effect; it is an effect on business load.

2.6 The appellant argued that, since the dynamic placement of advertisements controlled the users' behaviour such that a user would not be tempted to send a request to the contact center, the amount of network traffic resulting from customer requests was reduced. This was a technical effect that contributed to inventive step.

The Board is not persuaded. Firstly, claim 10 of the main request does not say that the incoming transactions are received over a network. Therefore, there can be no effect of those transactions on a network.

Secondly, even if the transactions were received over a network, the effect on network traffic would be a direct translation of the corresponding effect on customer demand. In other words, the technical character comes from the context of a networked communication system rather from the advertisement per se. As stated in the headnote of T 483/11 - "Document summary/ARIZAN CORPORATION", a feature does not automatically inherit the technical character of the context in which it occurs. The feature must, itself, make a contribution to that technical context.

2.7 Indeed, any message that is transmitted over a network has an effect on network traffic. That is just a normal and inevitable consequence of sending (or not sending) the message. However, that does not make the message content or the decision of when to send (or not to send) the message technical. In the Board's view, a further technical effect, which goes beyond the inherent effect of the message on the network is required. The Board sees no such further technical effect caused by the selection and serving of advertisements in claim 10.

The requirement of a "further technical effect" was first introduced in connection with computer programs in T 1173/97 - "Computer program product/IBM", OJ EPO 1999, 609. However, the principle holds also for other non-technical subject-matter, which inherently has some "technical" effect (see the Case Law of the Boards of Appeal, 8th edition, I.D.9.1.3 e) and T 1543/06 - "game machine/GAMEACCOUNT")

2.8 For these reasons, the Board judges that the selection and serving of advertisements based on the availability of the advertiser's resources at the contact center goes in the non-technical requirement specification. Starting from a standard networked computer system, the technical problem is how to implement the requirement specification.

2.9 The skilled person given the task of implementing the non-technical requirement specification would have had to provide suitable means for obtaining the availability information, and for selecting and serving the advertisements to the users based on it.

It would have been necessary to store the advertisements in some accessible data storage. Obtaining the availability information via the network by connecting to a router at the contact center would have been an obvious option. Furthermore, there would have had to be some means for selecting the advertisements and transmitting them to the users.

2.10 For these reasons, the skilled person would have arrived at the subject-matter of claim 10 without inventive skill. Therefore, the Board concludes that the subject-matter of claim 10 lacks an inventive step (Article 56 EPC).