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Proving Technicality – Shifting the Burden of Proof

8 April 2022

A recent Decision of Technical Board of Appeal 3.5.01, T 0550/14 (Catastrophe relief/SWISS RE) of 14.9.2021, discusses the approach Examination and Opposition Divisions should take to raising objections of non-technical subject matter and the detail they must provide to support such objections. Significantly, the Board states that the Division is entitled to raise an objection that a feature or problem is prima facie non-technical supported only by the assertion that it lies in one of the excluded matters listed in EPC Art 52(2) “or a related or analogous field”. Thereafter, the burden of proving that the feature or problem is technical lies with the applicant or proprietor.

The application at issue concerned a computer-implemented method for managing the funding of catastrophe relief efforts caused by natural or man-made disasters, such as earthquakes or storms. The method essentially involved a form of insurance provided by a special purpose vehicle with pay-outs linked to the severity of the event rather than the actual financial loss incurred. A “parametric index”, for example, linked to the wind speed of a hurricane, is used to determine whether a pay-out is due.

The Examining Division had objected that all features of the independent claim except the notorious general purpose computer related to a non-technical business method so that the invention lacked inventive step as the obvious implementation of that business method. On appeal, the applicant alleged that the Examining Division had not properly justified their objection, thus depriving the applicant of their right to be heard, at least in relation to the parametric index, which was a serious procedural violation.

Rejecting this, the Board observed that proving that a feature is non-technical is like proving a negative, which makes for rather short arguments, but there is much greater potential for argument that a feature is technical, e.g. using the CardinalCommerce approach involving the notional business person. The Board acknowledged that there were occasionally cases where a Division failed to adequately justify an objection of non-technicality, but they suggest the Division start with a prima facie assertion of non-technicality, which need not be backed by more than identification of the non-technical field of the feature. Only if the applicant or proprietor contests that need the Division go further and address the applicant or proprietor’s arguments.

In the case at hand, the Board were happy that this procedure had been followed and the Division’s rejection of the application as a straightforward implementation of a non-technical business method. The applicant had sought to argue that the presence of several interacting computer systems was technical but the Board considered that the different computers and their interactions just corresponded to the parties involved in the business method so would come about naturally in implementation of the method.

A further suggestion to Examining Divisions by the Board is that they search for and use as a starting point a document disclosing some non-technical features of the claimed invention so that it is not necessary to discuss the technical or non-technical nature of those features. This is an interesting suggestion because an early reason for the EPO not granting patents for non-technical inventions was that their collections of search material and search tools were not organised for non-technical subject matter. But perhaps their collections and tools have improved in the meantime.

The comments explicitly addressed to Examining Divisions and the distribution categorisation “B” – indicating it is to be circulated amongst the members of the Technical Boards and likely included in the case law summary – suggests that the Board intends this decision to be influential on practice. If this approach is adopted by Examining Divisions it emphasises the need for an application to support the technical character of the invention and for arguments in response to an objection of lack of technical character to be detailed and substantive.

For more information contact John Leeming or your usual J A Kemp adviser.

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