EPO: Non-Technical Features Cannot Support Inventive Step

According to Axel Horn at the IPJUR Blog, the European Patent Office (EPO) has issued another decision confirming that non-technical features cannot support the inventive step (nonobviousness) requirement for obtaining a European patent.



In case T 0531/03, the claims at issue required a cumulative discount certificate to be printed at the end of a transaction in which each entry corresponds to a different triggering product from the customer order. The prior art, on the other hand, disclosed a separate discount coupon being printed for each "coupon deal" which may be one triggering product or a predefined group of triggering product identified in the customer order.

The patent addressed "the problem of encouraging consumers to revisit the same store, so as to provide a consumer incentive to return to the store without having to manage the printing of a multitude of coupons." However, the Board viewed this characterization as merely a matter of marketing strategy and went on to redefine the technical problem/solution for determining whether there was sufficient inventive step:

The problem stated above is a matter of marketing strategy which does not in itself involve any technical considerations upon which an inventive step could be based. Therefore, an objective technical problem should be reformulated in terms of providing a technical implementation of the underlying marketing strategy. In the present case this means that the technical professional who is given the task of modifying the known electronic coupon generation system so that it operates according to a desired market strategy must, in order to carry out this task, also receive knowledge of this market strategy. This means the replacement of discount coupons with a single discount certificate.

The objective technical problem thus relates to adapting an electronic coupon generation system, such as that known from the prior art document, so that it generates a single cumulative discount certificate for each transaction. The opposition division correctly rejected the suggestion of the appellant that a technical problem may be formulated in terms of improving the efficiency and reducing the amount of paper used in printing the coupons or certificates, since this problem is not clearly and unambiguously derivable from the application as filed. In particular, is not an inevitable result from printing a single cumulative discount certificate using the system according to claim 1 that less paper will indeed be consumed. The appellant has also not provided any evidence that this would be the case.

The Board agrees with the opposition division's assessment that the
skilled person faced with the above technical problem would not require any
inventive skills to solve it. The appellant has also not contended that the solution of the above problem would involve any non-obvious technical considerations or provide any non-obvious technical effect. Therefore, in the Board's judgement, the subject matter of claim 1 according to the main request does not involve an inventive step within the meaning of Article 56 EPC.