March 8, 2022
T 2314/16 helps to clarify the European Patent Office (EPO)’s approach to business methods. The Technical Board of Appeal 3.5.01 made a favourable decision on patentability of an invention relating to influencer reward distribution for an online marketing scheme. This decision is likely to be helpful for applicants innovating in commercial, financial and service industries, which are often difficult to protect at the EPO.
Subject matter solely relating to methods of doing business or to present information has long been excluded from patentability under European patent law (Art. 52(2)(c) EPC). For example, European patents cannot be obtained for methods of accounting, advertising, or task scheduling as such.
However, for business methods which involve a mixture of non-technical business features and some technical features, patents may be obtained if the technical features (or their interaction with the business features) produce a technical effect and are inventive over the prior art. For example, features such as using a smartphone connected to a server to gather financial data, as well as storing and processing the data to make a decision (such as how much to charge a customer) may be considered technical and therefore, escape the exclusion of Art. 52(2)(c) EPC, despite being business-related.
Nonetheless, the EPO has historically taken a strict approach when determining which features of these mixed type inventions provide a technical effect. For instance, in T 1147/05, Board 3.5.01 rejected arguments that collecting and processing real world data for providing environmental impact information achieved a technical effect.
In the absence of a statutory positive definition of the term ‘technical’ against which to measure features of an invention, as part of their assessment of the inventive step, the EPO considers whether the features lie within the competence of a notional technically skilled person or of a notional businessperson. Those features lying within the competence of a technically skilled person are considered to contribute to the technical character of an invention, and only those features may be considered for inventive step. It follows that if all features are within the remit of the businessperson, there is no ‘invention’ in the legal sense.
However, in reality, the expertise of technically skilled people and businesspeople often overlap, so artificially separating the two for the sake of this legal test can produce grey areas when determining the patentability of subject matter.
Board 3.5.01 attempted to clarify matters in T 1463/11 and T 144/11 by indicating that inventions which simply solve the problem of implementing a business requirement are rarely patentable, again upholding a relatively strict interpretation of the law.
In June 2016, Rakuten Inc. filed an appeal against a decision from the Examining Division to refuse their patent application for lack of an inventive step.
The application related to distribution of rewards to users of an affiliate marketing scheme, such as social media influencers who endorse products or services. In this scheme, each influencer is allocated an area of an advertisement banner displayed on a website. When a website visitor clicks on the banner, the influencer whose area is clicked on receives a reward. Over time, rewards are collected and then distributed according to the area sizes: an influencer with a larger share of the banner will typically be clicked on more often and therefore receive greater reward. The relative sizes of the areas can be adjusted to match the amount each influencer contributes to the advertising; if one influencer attracts many clicks, their area of the banner may be increased.
The claims refused by the Examining Division essentially specified a web server that provides a web page with the advertisement banner, acquires coordinates of clicked locations on the banner, matches those clicked locations to influencers, and stores associated reward information. The Examining Division found a lack of inventiveness on the basis that the invention’s distinguishing features, when compared to known HTML server-side image maps (which allow web browsers to send click coordinates to web servers), “did not go beyond a mere automation of the business-related aspects”. However, the Examining Division provided no reasoning as to why certain features were deemed non-technical.
In their decision of December 2020, Board 3.5.01 deemed the technical problem solved by the invention to be the implementation of a business method, namely reward distribution. Importantly, they also clarified which features were part of the business requirements and which were part of the technical implementation of those requirements.
In this regard, the Board held that the “specification of the business method ended with how to determine the reward distribution ratio”, and that devising an approach that involved dividing an advertisement display area into sections and allocating each area to an influencer required an understanding of “how a website is built, and in particular how an image map works”. Thus, these features were considered to be within the competence of the technically skilled person, and therefore were part of the technical solution and should be evaluated for obviousness.
The Board went on to state that, when tasked with implementing reward distribution to a number of users and starting from known HTML server-side image maps, the allocation of users to partial image areas would not be obvious to the technically skilled person. Consequently, Rakuten’s application was granted.
Essentially, this decision builds on previous case law by confirming that the remit of the notional businessperson may end with the statement of the business requirements. The features that arise after this in the process of devising the invention may be attributable to a technically skilled person, and thus may be capable of conferring an inventive step.
However, this decision is key: it clearly defines the boundary between the domains of the technically skilled person and the businessperson, and it does so generously to maximise the range of subject matter that may be considered technical. The decision shows that the EPO is willing to grant inventions for business-related methods, as long as the technical solution is non-obvious.
This case demonstrates a more lenient attitude to business-related inventions, which will be welcome news for applicants seeking to protect such concepts. Whether this signifies a shift in the general position of the EPO on business methods remains to be seen, but T 2314/16 looks set to become important case law at least for implementations of business requirements. The decision has been included in the latest update to the Case Law of the Boards of Appeal, so a general awareness of its findings can be expected at appeal and perhaps even at other divisions across the EPO.
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