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An update to the story of the Notional Business Person

An update to the story of the Notional Business Person

21/03/19

We previously reported two EPO Technical Board of Appeal Decisions T1463/11 and T1658/15, which related to the assessment of inventive step for inventions covering a mix of technical and non-technical features.  In these two decisions the EPO introduced the concept of a “notional business person”.  You can read the original report on our website here.

The EPO has now issued a further Decision T0144/11 which provides more guidance on the use and meaning of the notional business person.  This matter was considered by the same Board of Appeal that issued the original decisions mentioned above (TBA 3.5.1).

The claimed subject matter of the main request concerned assessing the credibility of securities, e.g. bonds, and involved the calculation of rating values for them.  The overall rating value was calculated by summing the rating contribution values of the different security elements, e.g. guarantor, executor, face value, interest rate, etc.  Investors could then make decisions about the security based on the rating.  Part of the appellant’s reasoning in the main request in support of the subject matter claimed was that counting the number of transmissions of information about a security to a client would provide information of how popular a particular the security is, and therefore contribute to the information about its credibility.

The appellant attempted to define the objective technical problem as relating to the “determination of reliable ratings for securities” as set by the notional business person.

In reply however, the TBA questioned this reasoning and stated that the concept of the “notional business person” is only useful as “a starting point that might have to be modified when the implementation is considered”.  That is to say, when defining the objective technical problem, the concept of the notional business person can be used as a guide or starting point only.  It was stated that “examining the business requirements like that and correctly establishing what is to be implemented ensures that all technical matter arising from the idea of the invention and its implementation is taken into account for inventive step”.

In the present case, it was thought that the appellant tried to define an overly broad objective technical problem and argue that a method of counting was technical.  The Board of Appeal however considered that the popularity of a security is clearly a business idea because it is similar to counting the number of telephone calls or email enquiries on a particular security and therefore, due to COMVIK, cannot and must not be allowed to contribute to the presence of inventive step.  Hence, the notion of counting the number of transmissions had to be present in the objective problem which lead the Technical Board of Appeal to find the claimed subject matter was obvious to a person skilled in the art.

This further reasoning of the Board is likely to prove useful when dealing with cases which face the all too familiar “business method implemented on a computer” type objection. The reasoning in the decision specifically warns against having an overly broad objective technical problem.  In the present case, the opening paragraphs (background section) of the actual application were referenced as showing that the skilled person would find the notion of counting a number of transmissions to be part of the overall business concept.  For this reason, the Board of Appeal agreed with the Examining Division that the skilled person would have no difficulty in implementing the invention on such a conventional client and server system.  Consequently, the appeal was duly dismissed.

If you would like any further information on this please do not hesitate to contact one of our attorneys.