EPO reaffirms stance towards using non-technical elements to assess the inventiveness of computer-implemented inventions (T 0279/21)
The Technical Board of Appeal of the EPO has issued a decision, T 0279/21, regarding the inventive step requirement in relation to computer-implemented inventions, and the importance of distinguishing between technical and non-technical contributions. This decision highlights the challenges of patenting computer-implemented inventions, particularly those involving business processes or workflows.
The decision resulted from an appeal filed by Swiss Reinsurance Company Ltd., against the examining division’s decision to refuse European patent application No. 14734190.3 for lack of inventive step (Article 56 EPC). The examiners argued that the subject-matter of claim 1 was an obvious implementation of non-technical business constraints in the workflow system of D1 (US 2010/0161558).
The patent application in question concerned a system for automated real-time processing of (data) objects in workflows, specifically using state-transition-controlled processing. The application aimed to reduce human intervention and enhance flexibility in workflows by adjusting dynamically based on internal and external factors. The invention introduces ‘operating tags’, comprising operating parameters that are used to control the state transition of a (data) object in a process flow and can be changed by authorised assigner or assignee units of a process task.
In the appeal, the appellant amended "control system" with "electronic control system" and "object" with "data object", giving the appearance of a higher level of technicality. The applicant argued that rather than relating to a business process as such, the invention rather related to the automatic execution of a process with technical means and with an electronic control system. The appellant also argued that the ‘operating tags’ of the invention offered a technical solution for dynamic workflow adjustments, adapting the automation of the workflow.
They further argued that, following G 1/19, a method that changes something which is processed has a technical effect and is therefore technical. Their reasoning was that the "operating tags" represented a technical possibility of interaction with a process task and provided enhanced security through controlled access. Furthermore, in contrast to D1, the invention did not need a complex folder structure for realising a workflow system.
Despite these amendments and arguments, The Technical Board of Appeal agreed with the examiner and found that the use of the ‘operating tags’ were business constraints and did not contribute technical character. Further, The Board found that G1/19 was not applicable in this case, as it requires technical effects going beyond routine computer implementation, which was not realised by the introduction of ‘operating tags’. Therefore, The Board dismissed the appeal and the application was refused.
This decision is a pertinent reminder that the EPO takes a strict approach to assessing the technical contribution of computer-implemented inventions, especially when the invention is directed towards a concept akin to a workflow or task management system, which may be considered business methods lacking technical character. Furthermore, when attempting to establish inventive step, the independent claims must provide a clear technical advantage with respect to the prior art, and not merely consist of a modification of a business method to better implement business requirements, i.e. workflow rules.
Judgement: T 0279/21 (State-transition-controlled processing of objects/SWISS RE) 30-01-2024 | epo.org
