Essential guidance on patenting software-based inventions at the EPO - Part 2

Essential guidance on patenting software-based inventions at the EPO - Part 2

Essential guidance on patenting software-based inventions at the EPO (Part 2)
(T 1749/14 – Mobile personal point of sale terminal/Maxim)

Read part 1 here.
“The technical solution does not go beyond the concept of a mere automation of constraints imposed by the business related aspects”. The dreaded words are etched in the minds of anyone who prosecutes software patents in Europe. In our experience, examiners in certain fields such as fintech, e-commerce and advertising can swiftly resort to this kind of objection.
Following on from our analysis of T 697/17 and the guidance to consider when drafting a new software related application, we analyse recent decision T 1749/14 and outline what steps you should take to increase your chances of success for patenting your software-based inventions at the EPO. Practice points are set out at the end of this article.

The headlines

The landmark T 1463/11 (Universal merchant platform/CardinalCommerce) decision introduced the concept of the notional business person and their role in the assessment of inventive step. In short, they are able to provide the skilled person with purely business requirements such as “Move the money from the payer's account to the payee's account", without providing any technical input.
In the case at hand, the Board provided further guidance on the knowledge of the “notional business person” and their relationship with the “skilled person”. The Board stated that the notional business person knows all about the business related requirements and knows about the fact that such business related concepts can be implemented on a computer system. However, the Board emphasised that the notional business person does not know exactly how business related concepts can be implemented on a computer system. This is something examining divisions in certain subject-matter areas sometimes overlook, and indeed that is what happened in this case.
It can be frustrating when EPO examiners cite prior art without providing any detailed analysis of an invention with respect to that prior art. Often, it is merely stated that the novel features of the invention are all non-technical and administrative/business related, without any further detailed discussion of the prior art. It can sometimes feel like any case including the phrase “financial transaction” is doomed to failure. However, this case reemphasises the need for examiners to truly consider whether novel features of the claims can actually readily be implemented in a general purpose computer. It also highlights the technical nature of improvements to the security of data transactions, including financial transactions.
In practice, this means that if you can identify novel features which relate to technical implementation details which are more than a straight-forward 1:1 programming of an abstract business idea, you may be in luck. Specific examples highlighted in this decision are “new infrastructure”, “new devices”, “new protocol involving technical considerations linked to modified devices”, or any “security relevant modifications” over the prior art. Such features go beyond what the notional business person knows and therefore should be considered when assessing inventive step.
Often, we see examiners citing prior art without even analysing it in detail, dismissing the case as the mere automation of a business method. This practice is unlikely to stop overnight. This case reminds us that examiners need to be carefully considering whether a business idea can actually be automated by looking at and analysing the prior art and, if they are not, we need to be encouraging them to do so. The message is clear – differences in technical implementation of an invention over the prior art can go a long way to overcoming “mere automation” type objections. Detailed comparisons with the prior art are essential in identifying these differences and this is sometimes overlooked by examining divisions.

The detail

The decision concerns an invention in the field of mobile point-of-sale (POS) terminals for carrying out transactions between a merchant and customer. The invention tries to avoid a customer's sensitive information becoming known during a payment transaction where the merchant's device is compromised. It does this by allowing a transaction to be carried out without the customer having to present account information or a PIN to the merchant.
The customer is provided with a customer mobile personal point-of-sale terminal (CMPPT), which is a mobile phone (belonging to the customer) docked with a point-of-sale attachment portion in the form of a sleeve (also belonging to the customer). This enables a customer to provide the sensitive information needed to perform a transaction directly to a financial transaction verification entity (FTVE) without the need for any interaction with merchant hardware. The merchant is able to separately provide their account details directly to the FTVE.

Refusal at first instance

The closest prior art describes a cellular phone and docking module combination POS that does prompt user for a PIN. All the security relevant handling and encryption is done by the docking module, which belongs to the merchant. The applicant argued that this embodied the very security related problem of the customer having to provide his PIN and account number to a merchant device solved by the invention.
The examining division considered the novel features of the invention to be:

  1. storing customer account information in a customer mobile personal POS terminal,

  2. using this personalized CMPPT in subsequent operations,

  3. after the storing of customer account information in the CMPPT, receiving merchant account information into the CMPPT; and

  4. the sent account information refers to the customer account information and the merchant account information.

The examining division rejected the application in question as the novel aspects were deemed to relate to cognitive business aspects providing no technical contribution. The problem to be solved was formulated to be the implementation of the idea of defining the entry point of the transaction at a device belonging to the customer. This was held to be an obvious automation not modifying the standard and expected intrinsic behaviour of the technical features of the closest prior art.
In short, the requirements specification provided by the notional business person to the skilled person was considered to define the entry point of the transaction as being a customer owned sleeve and mobile phone. The novel features of the invention were considered to directly follow from the implementation of this requirements specification.

The Board’s view

On considering the case, the Board took a different view, deciding that the claimed subject-matter required the following structural and functional modifications of the mobile POS of the closest prior art:

  • dividing the mobile POS terminal into a merchant part and a customer part, the customer part consisting of a cellular phone portion and a docking portion (POS attachment portion),

  • personalising the customer part by storing dedicated encryption keys used for communication,

  • storing customer account information in the customer part of the POS terminal and

  • changing the transaction protocol by directly sending customer account information from the cellular phone portion of the customer part to the financial transaction verification center.

The Board held that these features provide security related effects in that only a personalised cellular phone can be used for a transaction, in contrast to the prior art where any cellular phone can be used, and the customer account information is sent directly from the cellular phone portion of the CMPPT to the FTVE, meaning that the customer account information is not accessible to the merchant's POS terminal.
The Board’s view was that the notional business person might come up with the abstract idea of avoiding the customer having to provide PIN and account information to the merchant. However, they felt that it could not be convincingly argued that this was sufficient to enable a skilled person with standard programming skills to implement this idea on a standard general purpose mobile POS terminal infrastructure. The required modifications were held to concern technical implementation details in that they required “a new infrastructure, new devices and a new protocol involving technical considerations linked to modified devices and their capabilities as well as security relevant modifications of the transfer of sensitive information using new possibilities achieved by the modifications to the mobile POS infrastructure”. This was considered to go beyond what the notional business person knows.
It is worth noting that the Board felt that due consideration of the technical contribution of the novel features had not been given at first instance. In its decision, the Board stated that it could not be sure whether the features alleged to be non-technical by the examining division had been systematically searched and remitted the case back to the examining division for further searching and consideration of other aspects such as essential features.

Practice points: dealing with a mere automation of an administrative/business method objection

This decision reminds us that there is a clear boundary when it comes to the domain of the notional business person and that of the skilled person. The domain of the notional business person is that of abstract business concepts. Anything which goes beyond a straight-forward 1:1 programming of an abstract business idea needs to be considered in light of the prior art and cannot be dismissed as the mere automation of a business method.

When looking to address mere automation objections, compare the implementation of any cited prior art with that of the claimed invention. Any difference could form a starting point for arguing that a particular feature relates to a structural and functional modification that cannot be specified by the notional business person.
Look to emphasise that the notional business person does not know exactly how a business related concept can be implemented on a computer system. Any structural or functional modification cannot be included in the requirements specification provided to the skilled person, and this should be pointed out to examiners.
Finally, “fixing” applications during prosecution can be incredibly challenging and is often simply not possible. The application in question discusses the security benefits associated with the invention in significant detail, and this will have played a key role in key role in persuading the Board of the technical advantages associated with the novel features. We would recommend consulting your trusted European advisor at the drafting stage to ensure that technical benefits are included at the filing stage … giving you the best chances of success at the EPO.
If you would like to talk to Greg about this or patenting software-based inventions in general, feel free to email him.

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