back to overview Role of the Notional Business Person in Assessing Inventive Step

On November 29, 2016, Technical Board of Appeal 3.5.01 decided on a parent application in T 1463/11 - "Universal merchant platform / CardinalCommerce" and on the corresponding divisional application in T 1658/15 - "Universal merchant platform II/ CardinalCommerce". The decisions include similar reasoning and are interesting because they expand on the modified problem and solution approach (referred to as the "Comvik approach" below) for assessing inventive step. Specifically, the decisions describe characteristics of a "notional business person" from whom the technically skilled person receives the technical problem to be solved via the claimed invention. Unless otherwise noted, citations below are taken from T 1463/11.

Referring to T 1463/11, the claim at issue describes how to distribute functionalities to process authentication for an online transaction in a computer system. A server provides various plug-ins to handle the authentication depending on the payment instrument (e.g., credit card) used. Previously, plug-ins were located on a merchant server that communicated with a user computer and authentication servers. The claimed invention centralizes the plug-ins on a merchant authentication processing system that interacts with the merchant server and the authentication servers.

In T 1463/11, the Board applied the Comvik approach to assess inventive step. In summarizing the Comvik approach, the Board noted that “only technical features can contribute to inventive step” (reasons 11), whereas features which do not contribute to the technical character of the invention cannot support the presence of an inventive step (T 641/00, Headnote I). The Board dealt with the "assessment of what is and what is not technical", which is often "a critical step in the formulation of the objective technical problem" (reasons 12) and the evaluation of inventive step.

The Comvik approach is intended to simulate "a realistic situation" in which a technical professional is given task information describing the problem to be solved, including any non-technical constraints that might be claimed (T 641/00, reasons 14). T 1463/11 expands on what that realistic situation might look like by introducing a “notional business person” as another actor, involved along with the technically skilled person in the formulation of the objective technical problem. The notional business person plays an important role in determining what requirements can be provided to the technically skilled person, and ensuring that "all the technical matter, including known or even notorious matter, is considered for obviousness and can contribute to inventive step" (reasons 16).

While this notional business person "will not include any technical matter" in requirements provided to the technically skilled person (reasons 13), the notional business person would not be deterred by any prevailing "business prejudice" (reasons 17).

Having introduced and explained the notional business person, the Board used this abstraction to show the flaw in the problem formulated by the Examining Division. The Examining Division "considered that the problem solved by the invention amounted to how to outsource the authentication of a commercial transaction to a third-party, which was an administrative or business activity" (reasons 18). "However, the Board judges that the transaction authentication in the present case cannot be abstracted to a purely business activity because it has aspects such as the use of plug-ins and servers" (reasons 19). Since the notional business person will not include any technical matter in the requirements provided to the skilled person, the notional business person "cannot require the technically-skilled person to use, for the plug-ins, a server other than the merchant server... The business person might well have noticed that expense and difficulties were involved in running the merchant server; but she has no technical appreciation of why that is or that using another server might help. Those are matters for the a (sic) programmer or network engineer" (reasons 20). Accordingly, "the decision to centralise the plug-ins in a separate server that can be accessed by several merchant servers, in order to simplify installation and maintenance and reduce load, should be considered a technical one" (reasons 21).

In both T 1463/11 and T 1658/15, the case was remitted to the Examining Division with an order to grant a patent. Applicants can only hope that the “notional business person”, described by the Board, will be as helpful in ensuring that all technical matter can contribute to inventive step in the prosecution of future applications as she was in T 1463/11 and T 1658/15.

If you have any questions, please contact adams@mueller-bore.de.

The text of the full decisions can be downloaded at:

http://www.mueller-bore.de/tl_files/Decisions_EPO/CardinalCommerce.pdf

http://www.mueller-bore.de/tl_files/Decisions_EPO/CardinalCommerce2.pdf

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