T 2491/12 - A business-related administrative concept

Key points

• " The Board agrees with the decision under appeal [of the examining division sion] that the subject-matter of independent claim 1 lacks an inventive step." 
• "the question of inventive step requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step" (Comvik)
• " The Board does not consider that the "configuration" of using a trading engine and a trade history database communicatively connected to each other and to counterpart computers provide for a real-time operation as argued by the appellant []" 
• " There is no disclosure on a technical level in the application as filed which supports such a point of view. In particular, there is no disclosure or corresponding features of the claims which contribute to making a technical process faster. The problem of difficulties for market counterparties (such as customers and dealers) to monitor outstanding transactions (such as tear-ups and assignments) are solved by establishing a notification system on the basis of a networked client-server computer system. [...] Consequently, the Board does not agree with the appellant's formulation of the problem as how to allow parties to monitor derivatives transactions in real time [.]"
• " The problem to be solved is the implementation of the claimed business related administrative concept [... on a  ...]  general purpose networked computer. The person skilled in the art within the meaning of Article 56 EPC, a computer expert provided with the complete description of the non-technical abstract administrative concept, would have considered the claimed implementation obvious in view of the normal skills and the general knowledge of computer programming." 

EPO Headnote
The claimed invention is not directed to a real-time problem in the sense of improving a technical process, but rather to automation in the sense of making (non-technical) financial information available quickly. This automation is achieved by mapping the financial concept of derivative transactions on a client-server computer system.


VI. Independent claim 1 of the main request reads as follows:

"1. A system for monitoring derivatives transactions, comprising:
a trading engine (10) capable of communication with a plurality of counterpart computers (50, 55) and enabling the execution of the derivatives transactions;
a trade history database (20) communicatively connected to the trading engine and capable of communication with the plurality of counterpart computers, the trade history database configured to store a set of records of at least a portion of the derivatives transactions executed on the trading engine; and
wherein the trading engine is configured to enable an unwinding of a derivatives transaction, initiate a record of the unwinding to be stored in the trade history database, and send a notification of the unwinding of the derivatives transaction."

Reasons for the Decision

Introductory remarks

1. The present main request corresponds to the set of claims on which the decision under appeal is based.

The assessment of inventive step in the decision under appeal considered a general purpose networked computer system as described in the description of the present application to be the closest prior art.

2. Article 56 EPC - Inventive step

The Board agrees with the decision under appeal that the subject-matter of independent claim 1 lacks an inventive step.

2.1 The claim is directed to a mix of technical and non-technical features. The Board does not dispute that the system according to claim 1 appears in a technical context. The system for monitoring derivatives transaction can be considered to be performed by technical means, because it involves a computer with means for storing data, means for processing data and means for transmitting and receiving data, and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 "Auction method/HITACHI").

2.2 However, the question of inventive step requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step (see T 641/00 "Two identities/COMVIK", Headnote I).

2.3 In the Board's view the unwinding of derivative transactions within the system for monitoring derivatives transactions pertains to a business related administrative method, i.e. to the non-technical part of claim 1. The processing of the underlying non-technical financial data merely maps the business related administrative concept of derivative transactions.

2.4 Furthermore, the Board does not consider that the "configuration" of using a trading engine and a trade history database communicatively connected to each other and to counterpart computers provide for a real-time operation as argued by the appellant (see point 1.2.3.4 of the statement setting out the grounds of appeal).

There is no disclosure on a technical level in the application as filed which supports such a point of view. In particular, there is no disclosure or corresponding features of the claims which contribute to making a technical process faster. The problem of difficulties for market counterparties (such as customers and dealers) to monitor outstanding transactions (such as tear-ups and assignments) are solved by establishing a notification system on the basis of a networked client-server computer system. This solves the problem that it may take several days for a certain dealer A to become aware that it no longer has a position with a particular customer, who has assigned a contract to another dealer B (see e.g. paragraph [005] of the description). This problem is solved by a messaging system based on a client-server system involving databases for a financial application without a further technical effect.

Consequently, the Board does not agree with the appellant's formulation of the problem as how to allow parties to monitor derivatives transactions in real time (see point 1.2.3.6 of the grounds of appeal)

In fact, the appellant admits that the real-time effect might only be achieved "in part" (see point 1.2.3.4 of the grounds of appeal).

2.5 The contribution of the invention lies rather in the way of associating information with financial trading data. Such data, however, in the Board's view, is not technical, since it is cognitive data, not functional data (see T 1194/97 Data structure product/PHILIPS, OJ EPO 2000, 525). Storage, selection and processing of such data is an implementation of an administrative measure, such as would be performed by a human when unwinding a derivatives transaction, making use of general purpose computer functions (e.g. storing and retrieving information in electronic form) without creating a further technical effect.

2.6 The only technical features of claim 1 which the Board can identify are those of a networked client-server system labeled with the underlying functions (trading engine, trade history database, counterpart computers etc.), which merely map the business related administrative concept of derivative transactions.

The fact that the monitoring derivatives transactions financial concept is performed automatically is an obvious consequence of using a computer system.

2.7 The Board therefore agrees with the decision under appeal that the closest prior art can be considered a general purpose networked computer system (see points 1.3 and 1.5 of the decision), which was generally known before the priority date. The problem to be solved is the implementation of the claimed business related administrative concept (see point 5.3 above and point 1.5 of the decision) on such a general purpose networked computer. The person skilled in the art within the meaning of Article 56 EPC, a computer expert provided with the complete description of the non-technical abstract administrative concept, would have considered the claimed implementation obvious in view of the normal skills and the general knowledge of computer programming.

2.8 Furthermore, the use of a centralised server system and the need for real-time operation were known in the art. For example, D1 discloses (see column 3, lines 54 to 64):

"The server-side functionality enables system users to interactively and seamlessly: engage in financial instrument trades; perform portfolio management, analysis, and reporting; obtain real-time market data and news; communicate with the system and other users via electronic mail, chat, and message boards; and maintain a calendar. The server-side includes interactive system servers that host such user activities, as well as one or more system databases, and an automated messaging server that controls communication with the automated back-end systems of clients."

D1 discloses an infrastructure with all the technical features of claim 1, on which the implementation of the business related financial trading concept does not involve an inventive technical contribution.

2.9 The appellant's arguments to the contrary provided with the statement setting out the grounds of appeal do not convince for the aforementioned reasons.

2.10 Accordingly, in the absence of any technical contribution beyond the straight-forward computer-implementation, the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC) over the common general knowledge or D1 in view of the normal skills in computer programming.