The EPO introduces the Notional Business Person
In Decision T1463/11 and T1658/15, relating to the assessment of inventive step for inventions covering a mix of technical and non-technical features, the EPO introduced the concept of a “notional business person”.
The related applications were directed to a system for secure payment in online shopping environments and aimed to solve problems e-commerce merchants faced in maintaining software for the multiple payment methods available to online shoppers. This choice resulted in many different plug-ins being maintained on the merchant servers. To simplify this, applicant proposed moving the payment plug-ins to a central server, therefore allowing maintenance and updates to be achieved centrally.
At first instance the Examining Division, using the COMVIK approach, separated the claim into its technical and non-technical features. This resulted in the widely encountered rejection of the applications on the basis that the claimed invention was a “straightforward implementation of a business method”.
However, the Board of Appeal considered that the Examining Division had not split the technical and non-technical features correctly and, to assist with such analysis, introduced the concept of a notional business person: stating that “… in the assessment of inventive step, the business person is just as fictional as the skilled person of Article 56 EPC”
In common with the notional skilled person, the notional business person is a completely legal construct, and also has the following attributes:
- they would not require the use of specific technical means, whether known or even notorious, in relation to the non-technical requirements of the invention; and
- they might do things that a real business person would not do, such as include requirements that go against business thinking at the time – “i.e. that they might not be persuaded by business prejudice.”
Point 1 above is particularly useful for applicants due to the fact that when forming the objective technical problem, the notional business person cannot require or suggest that the skilled person implement the requirements with any specific technical means or in any technical manner; the notional business person must not restrict the technical choices of the skilled person. This is because the notional business person is assumed to have no technical skills whatsoever.
Point 2 above differs from the notional skilled person in that it is not correct to assess the business thinking or business prejudices of the notional business person as doing so would violate the principles set out in COMVIK. It would lead to business prejudice being taken into account when assessing the non-technical features to be used for subsequent analysis of inventive step, which is contrary to the current procedure as set out in COMVIK.
Returning to the cases in hand, and having considered what non-technical aspects the notional business person would ask the notional skilled person to address, the Board of Appeal acknowledged that at the priority date, there was a technical prejudice against putting any part of the authentication process outside the merchants' servers – as confirmed by sworn statements submitted by the applicant. As a result, the notional skilled person would not have considered providing a Merchant Authentication Processing System (MAPS) server at all, let alone a MAPS server with the details defined in the claims.”
The decisions were overturned and grant of the patents allowed.
A further decision (T0630/11: “Waterleaf”) that cited the above decisions distinguished the difference between “requiring technical means” and “requiring something with technical implications”.
In short, the applicant introduced a “gaming server” to pool together casino members over several sites. During prosecution, the Examining Division suggested an objective technical problem as “how to pool users”; whereas the applicant argued that it should be defined as how “to find more gamblers to reduce waiting times”.
The Applicant cited the above decisions and alleged that the notional business person should not be allowed to impart technical means to the skilled user, as would be the case if the problem was “how to pool users”.
However, the Board of Appeal did not accept this line of argument and refused the appeal.