EPO Board of appeal remits to examining division when prior art search is needed (T-1159/15)

International

In Model determination system/Accenture Global Services Limited (Case T-1159/15), the board of appeal finds that need to perform a prior art search constitutes a special reason to remit the appeal application to the examining division. This is because the outcome of the search cannot be anticipated in advanced and the inventive step assessment of the claimed subject-matter has to be carried out anew. The board finds that this new assessment goes beyond the issues discussed in the decision under appeal. Therefore, special reasons were considered to subsist.

The full decision is available at

https://www.epo.org/law-practice/case-law-appeals/pdf/t151159eu1.pdf

The facts of the decision

The examining division of European Patent Office (EPO) has refused the European patent application No.10007106.7 on the ground that claim 1 of the application lacks inventive step. The claimed invention relates to a system and a method for creating mathematical models based on stored information, variables and assumptions (conditions) to forecast information for an objective. As an example, models related to sales of a product are described.  Based on variables like price, geographical distribution, advertisement cost, and assumptions, models estimating future sales are generated and used in order to create a business plan.

The examining division rejected the application for lack of inventive step over a general purpose computer. No prior art search was carried out during the first instance procedure and no prior art documents were cited during the examination procedure.

The appellant argued that some of the features the examining division concluded as non-technical features (i.e. the way of storing data in a multidimensional data storage with a meta data layer and a data layer) are not notorious and therefore a prior art search should have been carried out.  The applicant argued that the technical effects of using less storage space and faster response to queries were obtained.

Board’s reasonings & decisions

The board considers that claim1 defines a particular multidimensional data structure with a hierarchy of levels for each dimension, in which data are stored at the lowest level of each dimension. Moreover, the data structure stores instructions on how the stored data are to be aggregated up to higher levels of each dimension. Therefore, these features which store, retrieve, and process data affect the storage space and the speed of processing, providing a technical effect that goes beyond the “normal interactions” within a computer executing a business method. The board finds that these features cannot be considered as being notoriously well-known technical features for which no documentary prior art evidence is necessary. The board also finds that a comparison with the state of art is required to assess inventive step of the technical effect of these technical features.

Under Article 111(1) European Patent Convention, the board can either carry out a prior art search and proceed to the assessment of the claimed subject-matter with respect to the state of the art or remit the case to the examining decision for further prosecution. Remittal to the department whose decision was appealed for further prosecution is not possible unless there are special reasons.

In this case, since a prior art search is required, and the outcome of the search cannot be anticipated in advanced, the assessment of the claimed subject-matter with respect to inventive step has to be carried out anew. The board finds that this new assessment goes beyond the issues discussed in the decision under appeal. Therefore, special reasons were considered to subsist, and the case was remitted to the examining division.

Comment

This is a useful decision as it gives a rare example of a business method related technology with features considered technical by the board of appeal.