Bombshell Decision
T 2101/12 (Vasco) questions the technical/non-technical distinction

F. Hagel (FR)

By issuing decision T 2101/12 (Vasco) on January 24, 2018[1], the Technical Board of Appeal 3.5.06 unleashed a bombshell. In this decision, BOA 3.5.06 takes issue in blunt language with the exclusion of non-technical elements from the definition of the state of the art of Article 54(2) EPC asserted in decision T 172/03 (Ricoh) delivered by the Technical Board of Appeal 3.5.01[2] and with the incorporation of such restriction referring to the Ricoh decision in the Guidelines for Examination G-VII, 2.

Key points of the Vasco decision

The Vasco decision relates to the provision of electronic signature for documents. In the observations annexed to the summons, the Board had opined that the documents previously cited did not support a lack of novelty, set aside these documents as the most suitable starting point for the assessment of inventive step, and stated instead that the most suitable starting point should be "common general knowledge", described as the process in a notary's office.

The appellant challenged this statement, pointing out that it did not comply with the above-mentioned exclusion of non-technical elements affirmed in decision T 172/03.

The Vasco decision contains a potent rebuttal of this exclusion, set out in Sections 6.5 through 6.7, with the statement in Section 6.6 that "the interpretation of Article 54(2) EPC given in T 172/03 is incorrect". Quotations from the decision:

• "The wording of Article 54(2) EPC is clear and requires no interpretation". It "contains no limitation" excluding "a non-technical process such as the signing of a contract at the notary's office".

• This wording "is unambiguous in that it contains an unqualified "everything" (made available to the public, etc)";

• "Article 54(2) EPC defines what should be understood as "state of the art", and because it is a definition one cannot first ignore the definition by saying that the term "state of the art" should be interpreted in some sense, and only then start to read the definition in the light of that interpretation. This is exactly what is done in T 172/03".
  
  This strict interpretation of Article 54 EPC is clearly at odds with T 1784/06 Comptel, which states in Section 2.4 that "the restriction of substantive patent law to technical subject-matter is so self-evident that the founding fathers of the EPC did not even mention that requirement in the original (1973) version of Article 52(1) EPC."

• "If some generally known information is useful, even it should be designated "non-technical", there is no reason why the skilled person would ignore it."

• "The statement in Catchword 2 of T 172/03 is not part of established jurisprudence. [..] this limited view on prior art has not been mentioned in the summary of the pertinent case law give in T 154/04 DUNS, which G 03/08 has referred to for its summary of the case law."

In view of its literal, unrestricted interpretation of Article 54(2) EPC, Vasco defined the skilled person as a person having legal skills, in marked departure from the dual definition set out in T 1463-11 (Cardinal Commerce) which has assumed a notional business person providing business requirements to a technically skilled person.

The Cardinal Commerce decision offers in Sections 14-17 a discussion regarding such a business person. It accepts that in the real world, there may be a "real business person" who is not unaware of technology and that a business person unaware of technology may be viewed as "artificial" but asserts: "that is the price to be paid for an objective assessment" implying "a separation of business considerations from technical" in line with the principle set out in decision T 644/00 Comvik. This conclusion is in this author's view highly debatable: why should the concern about an objective assessment lead to select an artificial business person, rather than a real business person not unaware of technology? Logically, an assessment will be all the more objective as the skilled person is more "real" i.e. close to a real-life skilled person. If an artificial business person is to be selected rather than a real business person for consistency with the Comvik principle, this - judging the tree from the fruit - raises doubts as to the practical value of the Comvik principle.

In addition, a clear drawback of the two-layer definition of the skilled person of Cardinal Commerce is that it entails a significant increase of complexity, generating additional issues and uncertainties regarding the scope of knowledge of the business skilled person and its interaction with that of the technical skilled person.

Other noteworthy points in Vasco include the following:

• The best starting point was defined by Vasco as the common general knowledge and considered so well known by the Board that it did not require to be documented.
• The Board refused the appellant's request to submit the issue to the Enlarged Board of Appeal.

There is a head-on conflict between the Vasco decision and the Ricoh decision and the conflict relates to such a key part of the EPC as the definition of the state of the art of Article 54(2) EPC and, at least as importantly, to its interpretation, raising generally the topic of admissible interpretation methods of the EPC and more specifically of the restriction(s) a Board of Appeal may add in its interpretation of the EPC. Sharp disagreement between Boards of Appeal regarding issues of such utmost importance should absolutely be resolved. Unless Board of Appeal 3.5.01 which issued the Ricoh decision changes its position so as to resolve the matter, a referral to the Enlarged Board of Appeal would be warranted. As the Board has denied applicant's request to submit the matter to the Enlarged Board of Appeal, the only way available is a referral by the President of the EPO.

It is to be noted that Guideline GVII, 2 which incorporates the Ricoh interpretation of Article 54(2) EPC has not be amended so far. This is odd in this author's view since the Guideline has been explicitly challenged by a Board of Appeal decision. It would seem necessary for the information of the readers to at least mention the Vasco decision.

Beyond this issue, it is this author's view that the Vasco decision raises broad ramifications.

The technical/non-technical distinction, a grey area

First, it questions the technical/non-technical distinction which is the mainstay of the doctrines applied by the EPO in the patentability assessment of computer-implemented inventions in accordance with the "any hardware approach" set out in the PBS and the Hitachi decisions, approved by the Enlarged Board of Appeal in decision G 03/8, and in the assessment of inventive step in accordance with the problem-solution approach, especially the Comvik approach.

It is to be stressed that while the Vasco decision explicitly challenges the distinction technical/non-technical applied in the Ricoh decision by the addition of a restriction to the definition of the state of the art in Article 54 EPC, it also, as noted above, implicitly challenges the two-layer definition of the Cardinal Commerce decision for the skilled person involved in the assessment of inventive step under Article 56 EPC.

A remarkable paradox regarding the technical/non-technical distinction is that, while the scope and meaning of "technical" is so central in EPO doctrines, there is no positive definition for the term "technical" in the case law of the Boards of Appeal. Article 52(2) EPC in combination with the "as such" restriction of Article 52(3) EPC sets forth a list of excluded categories. It can be said that such categories are "non-technical", which provides a negative definition for "technical" inventions. However, the list of Article 52(2) EPC is not limitative, so that there is no certainty that any category of invention not listed in Article 52(2) EPC will be considered "technical".

It is apparent in this respect that the developments of the internet and the application of computer technology and digitization to all areas of human activity makes increasingly blurry or inadequate the distinction between "technical" and "non-technical". This is reflected in decision T 844/09 Paypal, which states that non-technical features may contribute to inventive step if they combine with technical features. Moreover, decision T 0144/11 (Security rating systems/Sato) of Board of Appeal 3.5.01 issued in August 2018, i.e. after the Vasco decision, offers a vivid admission of this blurry distinction by describing it as a "grey area" (Section 2.6).

Importantly, the Vasco decision does not discuss the scope of what is technical or not, it makes the distinction irrelevant to the definition of the state of the art in Article 54 EPC and to the definition of the skilled person in Article 56 EPC. To use a metaphor, this is like cutting the Gordian knot resulting from the ill-defined distinction between "technical" and "non-technical".

Second, as the Vasco decision offers a stern rebuttal of the addition of a restricting condition to Article 54 EPC i.e. the exclusion of non-technical information from the scope of the state of the art, it could be argued that the "any hardware approach", whereby compliance with Article 52(2)/52(3) EPC is shifted to the assessment of inventive step under Article 56 EPC, implies likewise the addition of a restricting condition to Article 56 EPC, namely, the condition of "technical content". Such addition could then be criticized as a violation of the EPC on the basis of a stricter interpretation of the EPC.

While the Vasco decision itself does not take issue with the "any hardware approach" and asserts compliance with Comvik and these doctrines are "established jurisprudence" of the Boards of Appeal, it is this author's view that the Vasco decision raises issues of principle and revisiting these doctrines deserves consideration.

This is all the more so as that recent decisions involve a growing complexity and resulting uncertainties and are a tough read even for seasoned professionals. An example is the decision T 1992/10 SAP.

The above-noted introduction in Cardinal Commerce of an "artificial" business person unaware of technology rather than a "real" business person raises concerns as to the quality of the assessment process.

Moreover, the definition of a non-technical feature is mitigated according to Paypal depending on whether this feature is combined with technical features. In other words, the qualification of a feature as non-technical becomes itself subject to a technical/non-technical distinction, a process which could be likened to a fractalization, i.e. the application of an initial distinction pattern to one of the elements produced by that initial pattern.

This author wishes to share other general reflections regarding the "any hardware approach".

Article 56 EPC turned into a catch-all tool

A general comment regarding the term "technical" and the "technical content" assessed in the assessment of inventive step of Article 56 EPC according to the "any hardware approach" is that the CII-related categories excluded under Article 52(2) EPC are indeed disparate (mathematical methods, business methods, presentations of information, software). The negative definition of the term "technical" is thus made up of an addition of disparate negative definitions, and as such it is a weak definition.

Looking at the exclusions listed in Article 52(2) EPC, it can be stated that the policy objectives underpinning the exclusions are diverse. In the case of the digital implementation of a business or legal method, as illustrated in the Vasco decision, the policy objective is to deny patentability to a straightforward implementation. In such a case, the assessment of inventive step makes sense. However, in the case of a mathematical method, the policy objective is to preclude a preemption of the method in every field of use, irrespective of whether the claimed method is innovative over the conventional method. In this case, the assessment of inventive step, taken strictly, is not an adequate tool. The relevant issues in this case are those covered by Articles 83 and 84 EPC: clarity, support in the description, sufficiency of description. Non-compliance with Articles 83 and/or 84 EPC may be decided in cases such as the lack of a detailed description of the implementation, a "broken chain" including a step relying on human intervention involving the subjectivity of a user, the absence of a specific field of application.

As these issues are conflated into the assessment of inventive step, it is not uncommon to find decisions in which defects such as mentioned above, while they do not depend on a comparison with the state of the art and relate to the description, lead to the conclusion that there is no inventive step. Such a conclusion has even been found in the case of a Rule 45 notification stating that a search of the state of the art was not possible.

Such reasoning relies on a link between the assessment of exclusions under Article 52(2) EPC and the notion of "technical problem" used in the problem-solution approach. According to this reasoning, for an invention to be eligible under Article 52(2) EPC, there has to be a "technical problem". It is the author's view that this overstretches the "technical problem" beyond its meaning in the context of the problem-solution approach. According to this approach, the technical problem is defined by reference to the closest state of the art, and according to EPO policy, it may have to be reformulated if the closest state of the art is different from that initially considered in the application. In other words, it depends on a view of the claimed invention through the prism of the closest state of the art. On the other hand, in the assessment of exclusions under Article 52(2) EPC, it makes sense to take into account all elements showing that the invention is eligible, such as the statement of a specific field of use, the description of specific implementations and the practical effects and/or advantages of the invention (which may refer to state of the art the applicant is aware of), irrespective of their relevance to a "technical problem" specifically linked to the closest state of the art. The assessment of eligibility under Article 52(2) EPC should thus focus on the description, not on the state of the art found as a result of a search carried out after filing. This is why Articles 83 & 84 EPC issues are usually relevant to the assessment of Article 52(2) EPC.

The global result is to turn Article 56 EPC into a catch-all tool. A negative implication is that while compliance with Articles 83 and 84 should be given close attention in CIIs cases, their conflation into Article 56 is not conducive to such review.

Another negative implication is that it inevitably creates a disturbing gap with the case law of Member States. The courts of Member States are bound to decide on the grounds raised by the parties. When a party in a CII case challenges the validity of patent claims on the basis of the national counterpart of Article 52(2) EPC, the court has to make a decision on that ground. This happened in a decision of the Paris Appeal Court of December 16, 2016 (Dassault Systemes vs. Sinequa) in infringement proceedings involving a patent on a search engine. The Paris Court invalidated the patent on the basis of Article L.611-10.2 CPI, the French counterpart of Article 52(2) EPC. This decision is noteworthy in that the patent at issue was the French part of a European patent and thus offers a modicum of judicial oversight of great interest to which the EPO and the Boards of Appeal should heed, and this applies as well to court decisions of other Member States dealing with CII-related European patents.

It is also worth noting that the "any hardware approach" policy of the EPO was firmly rejected at the 2017 AIPPI World Congress - Sydney on October 17, 2017. Resolution #4 adopted by the Congress reads as follows "Eligibility of a CII for patent protection should not depend on the prior art or any assessment of novelty or inventive step."

A recent example of the scant attention to Article 83 & 84 EPC issues is provided by the Guideline issued in October 2018 in relation to artificial intelligence cases. This document is only concerned with inventive step and totally silent on these issues. It is this author's view, however, that such issues are indeed significant albeit not always readily apparent.[3]

The problem-solution approach in CII cases

These issues are compounded by the systematic use by the EPO of the problem-solution approach. This approach is strong but as any tool, its validity is not universal.[4] Its structured reasoning sequence works quite well when there is a clear, undisputable closest state of the art and provides an efficient safeguard against hindsight-guided reasoning, likely to occur when the examiner has broad discretion in assembling state of the art items. But there are not infrequent cases for which it is unsuitable: this happens for the so-called "problem inventions" i.e. cases in which the problem is new and unobvious. Or it entails difficulties of its own making when there is no undisputable closest state of the art.

The field of CIIs offers a challenging area for the problem-solution approach, as strikingly illustrated by the Vasco decision. The conflation of the assessment of Article 52(2) EPC with Article 56 EPC entails the combination of a technical/non-technical distinction with the problem-solution approach, generating difficulties in particular for the definition of the field of the invention; the definition of the skilled person (two-layer definition of Cardinal Commerce); the selection of a closest state of the art.

A contribution on the same topic by Alasdair Kennington in the form of a three-part article published in epiInformation 2016-1 to 3 "A Review of the "Problem and Solution" Approach to Inventive Step under Article 56 EPC" points out an issue arising from the Comvik approach which allows a non-technical feature - to be disregarded in the assessment of inventive step - to be shifted to the definition of the technical problem. The author warns in this respect that the technical problem must be known or obvious, otherwise the technical problem may provide a pointer to the solution and the reasoning is tainted with hindsight.

US case law on eligibility of CII inventions has come much more restrictive

The "any hardware approach" and the notion of "technical content" were developed by the Boards of Appel in the early 2000's. At that time, the meaning of the term "technical" did not raise the uncertainty which is experienced today as a result of the global digitization of all human activities and of the spread of internet.

This period also saw a surge of business method patenting in the US as a result of the 1998 State Street Bank decision of the US Court of Appeal for the Federal Circuit (CAFC). This may have been a significant factor in the creation of the EPO doctrine of the "technical content" replacing the assessment of Article 52 EPC and its conflation into the assessment of inventive step, since the emphasis on "technical content" was seen as a bulwark against a flood of business method applications.

Since then, the US approach to CII inventions esp. business methods has swung from one extreme to the other with the Mayo/Alice decisions of the US Supreme Court. The principles set out in Alice do not match the "any hardware approach" of the EPO : the assessment of eligibility under 35 USC 101 of US patent law is separate from that of obviousness under 35 USC 103. However, judging from the case law of the CAFC and the rate of rejection of CII patent applications and invalidation of CII patents by the PTAB, the threshold of eligibility in the US and at the EPO for CII cases are by and large not so different now.

A review of the CAFC decisions implementing Alice shows that the eligibility assessment focuses on the content of the patent/patent application, paying special attention to detailed information regarding specific use, detailed implementations, practical results. This assessment thus relies on issues which could be linked to 35 USC 112(a) and (b), the US counterpart for Articles 83 and 84 EPC. As mentioned above, the recently published guidance of the US Patent & Trademark Office includes a section dedicated to these issues.

1. This decision has been signaled by Michael Fischer in an article published in epi Information 3|2018 "Dealing with Non-Technical Features before the EPO".
2. Board of Appeal 3.5.01 handles most cases relating to computer-implemented inventions.
3. In contrast, the "2019 Revised Patent Subject Matter Eligibility Guidance" issued by the US Patent and Trademark Office includes a section dealing with compliance with Article 112(a) and (b), the US equivalent to Articles 83 & 84 EPC.
4. The claim that there is no invention if there is no inventive step as assessed under the problem-solution approach brings to mind this self-ironical definition of intelligence attributed to Alfred Binet, one of the creators of the IQ test: "Intelligence is what my tests measure".

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