Who is the notional business person?

M. Fischer (DE)

In the daily routine of a technology company, it is not an uncommon situation that engineers complain that their business managers lack an understanding of the technology but that their expectations, often expressed in form of requirements specifications, are quite high. Vice-versa, managers criticise that engineers do not have any understanding for the business aspects of the company. Interestingly enough and for a couple of years now, this situation also exists in the jurisprudence of the Boards of Appeal. There, however, the situation is purely fictitious and the lack of mutual understanding is explicitly desired since it is assumed that both live and act in completely different spheres. Since the concept of the notional business person has since then evolved in a series of decisions, it is worthwhile having a closer look at this fictitious person.

T1463/11: While the person skilled in the art has always been there, the notional business person now enters the stage for the first time

The COMVIK approach, which is commonly used by the Boards of Appeal when dealing with claims having a mix of technical and non-technical features, requires that the non-technical features must be disregarded in the assessment of inventive step. As a consequence, the non-technical features “may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met” (T641/00). In other words, the non-technical features may be used for the formulation of the objective technical problem that is given to the person skilled in the art in order to solve it. Maybe the wording “may legitimately appear” should be formulated as “should appear” or even “must appear” because putting the non-technical features into the problem avoids that they can contribute to the solution. However, once the non-technical features are in the problem, the technical solution thereto may appear obvious, as it happened in T641/00. The question may arise whether a problem is still an “objective technical problem” since it contains nothing more than business requirements. The question is yes, since the precise problem is to implement the business requirements with technical means.

In decision T1463/11 (CardinalCommerce) of 29 November 2016, Board 3.5.01 introduced for the first time an antagonist to the person skilled in the art, namely the “notional business person”. To come to a balanced assessment of the claims, the Board arguably held it expedient to reflect the interaction between technical and non-technical features also on a personal level. The purpose of this fictitious person is to be very cautious which requirements may be used in the formulation of the objective technical problem, i.e. “what requirements the business person can actually give to the technically skilled person. 2 Naturally, any requirement that is purely a business mater can be included. The business person can formulate requirements such as, “Move the money from the payer`s account to the payee’s account”, but in the normal course of things, the business person will not include any technical matter. In the real world, there might be circumstances under which a business person might require some particular technology be used. A real business person is not unaware of technology, and might, for example say, “We should do this on the internet", or "Let's do this by wireless", or "We have a lot of XXXX processors, please use them to implement my business idea."

However, in the assessment of inventive step, the business person is just as fictional as the skilled person of Article 56 EPC. The notion of the skilled person is an artificial one; that is the price paid for an objective assessment. So it is too with the business person, who represents an abstraction or shorthand for a separation of business considerations from technical. A real business person, a real technically-skilled person, or a real inventor does not hold such considerations separately from one another.

Thus, the notional business person might not do things a real business person would. He would not require the use of the internet, wireless, or XXXX processors. This approach ensures that, in line with the COMVIK principle, all the technical matter, including known or even notorious matter, is considered for obviousness and can contribute to inventive step.

The Board went on to say that, on the other hand, in contrast to the real business person the notional business person is free of “business prejudices”, i.e. business prejudices can be incorporated into the problem so that they do not contribute in the assessment of inventive step.

Returning for a moment from the fictitious world of business person and skilled person back to the real world which offers a series of job pairs having a similar antagonistic relationship: Cook / Food Chemist, Fashion designer / Textile engineer, Architect / Construction engineer, Florist / Gardener , Florist / Plant geneticist. In each case, both deal with the same subject matter, but have a different view on them. Although they see the world through different glasses (or different filters), they have a certain knowledge of the other’s world and do not live in completely disjoint spheres such as person skilled in the art and the notional business person. While in the series of job pairs above the first deals with non-technical, mostly aesthetic aspects, the second deals with the technical aspects. Let us recall that according to Art. 52 (2) (b) EPC “aesthetic creations” are excluded from patentability and are considered to be non-technical which means that also in this field, the COMVIK approach is to be applied, which means that aesthetic features cannot contribute to the inventive step. Although the claims tend to be purely technically formulated and a mix of technical and non-technical features is less likely to be experienced or less problematic than in the field of 3 business methods. For the next royal wedding, a florist providing floral arrangements may ask a plant geneticist to create a new genetically-modified flower having exactly the extravagant colour of the bride’s wedding dress. A cook may ask a food chemist to create pasta which tastes like cheesecake. A claim providing a solution to these problems will certainly have technical features. And should an aesthetic creation, for example a garment, simply look fancy but not provide a technical effect, it can still be protected by design models leading me to the conclusion that Art. 52 (2) (b) EPC is an interface between patent law and design model law.

T630/11: Applying the new caselaw but without success

In T630/11 (Waterleaf) of 13.07.2017, the applicant wanted to make use of the relatively new notional business person caselaw and put forward that the non-technical requirements should not be formulated in such a way as to have “technical implications”. The patent application related to on-line gaming and proposed that, to reduce waiting times for gamblers seeking to join a game, waiting gamblers from several on-line casinos should be pooled to provide the minimum number necessary to make up a new game. The solution to this was to provide an additional “gaming server” which operated the game amongst the pooled gamblers and distributed wins and losses to the gamblers’ accounts at their home casinos. According to the applicant the non-technical requirements are to be framed as “to find more gamblers to reduce waiting times” and not “to pool gamblers between casinos” because the latter would have technical implications because it would require modifications to the servers and networks implementing the on-line games.

By this argumentation, the applicant overstretched the argumentation of T1463/11 and did not find the consent of the Board. Rather, the Board clarified that the notional business person may formulate a problem that requires something which has technical implications. It argued that the difference between requiring technical means on the one hand and requiring something which has technical implications on the other hand becomes clear when looking at the following example:

“A reader or author or publisher might form a desire to make a second copy of a particular book. Now, a book is certainly a technical artefact, but it is also an art object. The reader who wants to give the book as a gift is not concerned with technical issues. He can think of the book and formulate his desire purely in terms of the book as art object. To fulfill the desire, something technical will have to happen. Thus, he requires something which has technical implications. That is not an impediment under the CardinalCommerce approach.”

Put differently, non-technical requirements (which do not contribute to inventive step) can be formulated in such a way as to require technical implementation as long as they do not 4 constrain how that technical implementation is achieved, as might be done, for example, if specific (even notoriously known) technical features are required.

T144/11: The implementation-type problem is not always the end. It may just be the beginning

It belongs to the COMVIK approach like a tank belongs to war and is equally powerful against and unpopular with applicants. The implementation-type problem, which is simply a problem of the type “implement [the business requirement]” is the Examiner’s weapon of choice if he identifies some non-technical features, preferably business-related features, in the claim. In T144/11 (SATO) of 14 August 2018 it was held that a problem of the type "implement [the business requirement]" will normally never lead to an allowable claim. Either the implementation will be obvious or have no technical effect, or if not, the implementation will have a technical effect that can be used to reformulate the problem essentially to "achieve [the effect of the implementation]".

However, the implementation-type problem is just a starting point that might have to be modified when the implementation is considered. It helps when a technical problem is not apparent at the outset. Examining the business requirements carefully and correctly establishing what is to be implemented ensures that all technical matter arising from the idea of the invention and its implementation is taken into account for inventive step.

T1082/13: A small step back: the notional business person is not completely technically blind

In T1082/13 (SAP) dated 31.01.2019 it was held that the notional business person knows all about the business related requirements specification and knows about the fact that such business related concepts can be implemented on a computer system. The choice of where to do a calculation in a distributed system is not necessarily technical, but can also be driven by administrative considerations. What the notional business person does not know, however, is how exactly it can be implemented on a computer system. This is in the sphere of the technical expert and subject to the assessment of inventive step.

When referring to prejudices, it has to be carefully analysed, whether it is actually a technical prejudice or, in fact, a business prejudice (e.g. just a new way of organising a business transaction that goes against traditional ways of organising it). As mentioned above, a business prejudice must not contribute to the assessment of inventive step.

T2455/13: Non-technically specified modules are not helpful

In the latest decision of sequel of decisions developing the concept of the notional business person, T 2455/13 (Swiss Reinsurance) of 29 January 2020, Board 3.5.01 held that also the non-technical skilled person has knowledge of the possibilities of a realisation of business-related concepts on network-based computer systems. He knew at the priority date a plurality of computer and network based business processes (e.g. in the domain of payment processes, materials logistics and also insurance business), to have an idea of what is feasible conceptually on an abstract meta level. What the non-technical skilled person does not know is how exactly an implementation is done on the computer. This is within the sphere of the programmer and must be taken into account in the assessment of inventive step (cf. T1082/13, reason 4.8). If features are merely specified on an abstract meta level as modules and represent functions as the non-technical skilled person would take as a basis in his concept, so he would not specify any technical features. Only by the indication of real implementation steps in the claim, these modules qualify as technical features.

The Board found that neither claim 1 nor the application documents as a whole show how a technical implementation should be done which could form the basis for an inventive technical contribution. Filtering unit, weighting module, databases and analysis module are only specified on an abstract meta level as ”modules“, without that their technical structure is explained in detail. This means that even potentially technical features become void or empty unless they are sufficiently technically specified. Needless to say that a not further technically specified “module” evokes the impression that it is purely conventional making a argumentation in favour of inventive step difficult.

T1749/14: More than a straight-forward 1:1 programming of an abstract business idea

In this brandnew decision T1749/14 (MAXIM) of 3 April 2020, the Board acknowledged that the invention required “a new infrastructure, new devices and a new protocol involving technical considerations linked to the modified devices and their capabilities as well as security relevant modifications to the previously known mobile POS (point of sale) infrastructure”. The notional business person would not know how to exactly implement that invention on a computer. The Board acknowledged that they cannot be sure that the features which have been considered to be non-technical or not contributing to inventive step have been searched which led the Board to the order to remit the case for further prosecution. The ratio decidendi stated that “the assessment of inventive step will have to consider all the technical features and their respective technical effects”. While the new Rules of Procedure (RPBA2020) aim at reducing the number of cases to be remitted, this case fell under the “special reasons” exception (Art. 11).

Outlook and Conclusion

Although the numbers of patent applications in the field of blockchain have increased a lot, as far as I know no decisions by the Boards of Appeal relating to this technology have been issued so far. It is only a matter of time until they come and it will be interesting to see how the concept of COMVIK will be applied to this technology.

I am sometimes asked what the concept of the notional business person is all about and whether or not the concept of the notional business person is something positive for the applicant. Diplomatic as I am, I normally answer that this concept is neither positive nor negative for the applicant but simply tries to apply the highest level of objectivity and separation between technical and non-technical features in the assessment of inventive step. However, it is not a secret, and backed-up by statistics, that when we open the COMVIK discussion, analyse technical and non-technical features and the notional business person enters the stage, the chances of obtaining a patent are not the best at the Boards of Appeal. To avoid this discussion, the patent application should be drafted as technically as possible, non-technical and in particular business jargon is to be avoided or clearly characterised as an application domain of a technical solution. Once a claim has been drafted and potentially non-technical features are still in it, a patent attorney should strive to divest the claim of its non-technical features to bring to light its technicality.