EP 3 427 202 A1 relates to a method for producing shipping documentation by using intelligent generation subprocesses. It was originally filed as PCT/US2017/020662 and published under WO 2017/155813.
Known systems, although partially automated, are said to require a degree of user interaction.
At various steps, users are required to enter or select information and are presented with advices, warnings or error messages they must resolve.
All this must generally be completed before the system starts the generation of the shipping label, and this may render the overall process slow and tedious.
Brief outline of the case
The application was refused on the ground of lack of IS of all claims of the MR and AR1 in view of D1=EP 1 785 856.
The board confirmed the refusal. The board dealt first with AR3 and extended its conclusions to the higher ranking requests.
The applicant’s point of view
The applicant argued that, while the “notional business person” might come up with the abstract idea of automating the generation of shipping documentation, they would not be able to define “new devices, infrastructure or protocols necessary, such as those defined in the independent claims”.
Moreover, at least defining when the failure state mitigation processing was initiated, i.e. in response to a critical issue arising from a suspended advice or defaulting a configuration factor, implied technical considerations.
The applicant argued that the technical problem solved was “how to reduce the occurrence of failures in an automated computer process”.
The board’s decision
Claim 1 of AR3 defines a method for generating shipping documentation.
The method does not imply the production of a physical document or the display of the documentation to the user but the mere generation of a dataset which, in itself, does not have a technical significance and is not used for a technical purpose.
The board agreed that some of the claimed steps are not strictly business-related and are arguably conceived by a computer programmer rather than by a person with a business background.
The board noted that, the presence of algorithmic steps conceived by a computer programmer, rather than by a business person, is not sufficient to confer technicality on the claimed subject-matter, since computer programs are not inventions and are excluded as such from patentability under Article 52(2,c) and (3).
Method steps have a technical character only in so far as they involve technical considerations, for example, concerning the implementing machine or a controlled technical device or process, and may contribute to the assessment of IS only if they solve a technical problem by providing a technical effect.
The definition of critical issues, that is, issues indicating “that shipping documentation processing should not or cannot be performed”, is considered part of the underlying non-technical requirements. It follows directly from this definition that these issues must be overcome in order to produce the documentation.
Furthermore, even if it were considered technical, the choice of the point in time at which the state mitigation processing is initiated, i.e. after the issue has been identified and before the documentation is generated, would be self-evident and could not support an IS.
Summarising, in the board’s view, the only technical aspect of claim 1 resides in the use of a generic computer running a computer program. Such means were well known at the priority date of the application and, contrary to the applicant’s view, cannot be considered “new devices, infrastructure or protocols”.
The board disagreed with the applicant’s formulation of the problem to be solved. The alleged reduction in the occurrence of failures in the generation of the shipping documentation is achieved, if at all, through non-technical, administrative steps. Here again, the mere automation of these steps on generic computer means does not lend technicality to the steps per se.
In the board’s view, the only technical problem solved is the automation of a non-technical method for generating shipping documentation. It is solved, in an obvious manner, by loading and executing a software module on generic computer means.
Comments
The board actually confirmed the stance that a patent represents a technical solution to a technical problem. The use of technical means does not imply that the whole “invention” has a technical character.
In the present case, this is the more so since the method does not imply the production of a physical document or the display of the documentation to the user but the mere generation of a dataset.
Even if the end result of the method would be a document, be it on paper or on the screen, would not render the invention technical. Using a printer or a display, might be technical, but common practice not implying any IS.
Last but not least, the mere automation of business steps on generic computer means does not lend technicality to the steps per se, and cannot confer IS.
Comments
Leave a comment