Case Law of the Boards of Appeal of the European Patent Office

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writing in the period up to the end of 2021, as well as a number of particularly important ones from the first Since the result of the straightforward implementation of the above cited business scheme is the method defined in claim 1, the board concludes that the subject-matter of claim 1 of the main request does not involve an inventive step (Articles 52(1) and 56 EPC). A word should be said here about I.D.4.5 in the ‘White Book’, ..." in David Rogers, "Patents: Inventive step (alternative formulation of problem) and ‘old’ closest prior art: whether to admit an auxiliary request filed at the end of the oral proceedings", Journal of Intellectual Property Law & Practice (2007) 2(4): 210-211 doi: 10.1093/jiplp/jpm021

Claim 1 of the third auxiliary request is based on claim 1 of the main request with the following amendments:Therefore, the board concludes that the subject-matter defined in claim 1 of the second auxiliary request does not involve an inventive step (Articles 52(1) and 56 EPC), either. II. At the end of the oral proceedings before the board the appellant requested that the decision under appeal be set aside and a patent be granted on one of the main request or first to third auxiliary requests, all submitted with the statement setting out the grounds of appeal. The main request and the first and second auxiliary requests are identical to the corresponding requests underlying the impugned decision.

VIII. The appellant's arguments, insofar as they are relevant to the present decision, may be summarised as follows: The third auxiliary request was submitted for the first time with the statement setting out the grounds of appeal. The board therefore has the discretion not to admit this request into the proceedings under Article 12(4) RPBA 2007 (which here applies according to Article 25(2) RPBA 2020), if it considers that it could and should have been filed during the first instance proceedings. In addition to the non-inventive subject-matter defined in claim 1 of the main request these features now additionally defined in claim 1 of the second auxiliary request refer to an additional business constraint provided by the business person and handed over to the technically skilled person for computer implementation, namely that the reminder is based on specific information which should then be provided to the user together with the reminder. For example, a reminder for a meeting with another persons is created using a document including the agenda of the future meeting and access to the agenda is automatically provided to the user when the reminder is triggered. The skilled person will have no difficulty to implement this as a further implementation step in addition to all steps carried out in relation to the business scheme already dealt with for the main request.Hence, features a) and b) derive immediately from the straightforward implementation of the non-technical business requirement mentioned above. All other features relating to the remaining steps of the computer implementation of the business scheme are also straightforward implementations since the technical means required for all these various procedural steps are well-known standard features and the definition according to claim 1 is technically unspecified. This is not disputed by the appellant. The board is of the opinion that these amendments do not to change the non-technical nature of the underlying problem nor do they provide any further technical effect. These newly introduced features represent further non-technical business constraints of the underlying administrative/business method. They are handed over to the skilled person, who implements them in a straightforward manner without any difficulty. The technical advantages as argued by the appellant, namely the reduction of wear and tear, the reduction of power consumption and the reduction of time when accessing the stored content are technical advantages which are inevitable side effects of the computer implementation itself. These side effects cannot be considered as further special technical effects since they derive inherently from the computer implementation of the desired business aim.