The Notional Business Person – a New Actor on the IP Stage?

May 11, 2017

companies, both start-ups and established organisations, seek to protect new
business methods through patents.
Although the situation in the US has fluctuated a lot, it has long been
the position in Europe that only technical inventions can be patented.
  However, when a business method is implemented
on the internet, or using other forms of technology, there has been a lack of
clarity as to what aspects of the invention should be regarded as technical and
hence can contribute to the ‘inventive step’ necessary to obtain a patent, rather
than non-technical (and thus disregarded).

The New Decisions 

European Patent Office in Munich is the primary granter of patents in Europe
and the decisions of its Boards of Appeal on what is patentable are respected
(to a greater or lesser extent) by the courts of countries around Europe.  Two recent Decisions of a Board have given
valuable guidance on the treatment of inventions that implement business
methods and are rare positive verdicts on two related applications for such
inventions.  In the process, the Board
has introduced the concept of the ‘notional business person’, whose
hypothetical actions need to be considered alongside the venerable ‘person
skilled in the [technical] art’.

two decisions are
1463/11 (Universal merchant platform/CardinalCommerce)
and T
1658/15 (Universal merchant platform II/CardinalCommerce)
.  The cases concerned patent applications for
two aspects of an e-commerce system, both of which were rejected by the
Examining Division as uninventive.  Broadly
speaking, the inventions aim to solve problems arising from the need for an
internet merchant to maintain software to deal with many different payment
methods.  In the prior art each different
payment method was handled by a respective plug-in which the merchant had to
keep up-to-date on their own server.  The
inventions shift the plug-ins to a ‘merchant authentication processing system’,
adding an extra server to the system.  In
this extra server, the plug-ins can be updated centrally.

EPO’s approach to examination of what it calls mixed inventions – ones having
both technical and non-technical features – dates back to a 2002 case known as
Comvik.  According to this approach, non-technical aspects
of an invention are assigned to a preliminary ‘requirements’ phase and cannot
contribute to (technical) inventive step. 
This approach is perhaps suggested by a classic system development
process in which system requirements are defined before any development work
begins.  The first instance Examining
Division applied this approach and considered the inventions to be straightforward
implementations of business processes.  The
Examining Division saw the invention as just outsourcing the payment mechanism.  The Board however considered that the
Examining Division’s approach did not correctly separate technical and
non-technical aspects of the invention.

as the inventive step is to be judged by the hypothetical ‘person skilled in
the art’, who will consider only the technical features of the invention, the
Board held that the non-technical aspects would be addressed by a ‘notional
business person’.  The notional business
person is not a real business person but an artificial construct just like the
person skilled in the art.  The person
skilled in the art is supposed to be fully familiar with their field but to
have no inventive ability and similarly the notional business person has no
technical ability.  Thus the notional
business person and person skilled in the art have no overlap.

The Board indicated that there are two
consequences of the artificiality of the notional business person: 

notional business person would not require the use of specific technical means,
however well known, in the non-technical requirements, whereas a real business
person might

the notional business person might do things that a real business person would
not, such as include requirements that go against business thinking at the time
– ‘a sort of business prejudice.’

latter point seems contradictory to the behaviour of the person skilled in the
art who is supposed to take account
of technical prejudices.  However, the
Board held that disregarding business prejudices is essential as otherwise
business requirements would need to be evaluated and would contribute to
inventive step, contrary to the Comvik principle.  This is also a departure from the approach of
the UK courts which have taken into account commercial prejudice, notably in Dyson v Hoover [2002] RPC 22.

In the
CardinalCommerce cases, the EPO Board
of Appeal therefore disregarded many of the applicant’s arguments in favour of
inventive step as being business prejudices but still found that there were
sufficient technical prejudices against relocation of the payment plug-ins to
an extra server that the inventions were not obvious.  The business prejudices that were disregarded
were that merchants considered it was essential that they keep control over
consumer transactions, and the payment operators were worried that the
introduction of another party would affect profits.  On the other hand, the technical prejudices
that persuaded the Board were the potential for an increase in latency,
possible reductions in the number of transactions that can be processed in a
given time period and an increase in the number of points at which
communications could be subject to hacking.

claims at issue included quite a lot of technical detail as to how this was
achieved but the Board did not think it necessary to consider that in detail as
the technical prejudice against relocation of the plug-ins was enough to
establish an inventive step. 

from several experts in the banking and payment industries were filed in
support of the inventions but their statements were given ‘little value’ by the
Board on the ground that the experts were more like business people than
technical experts and because they addressed specific embodiments rather than
the generality of the claimed invention.

Useful Lessons

are several useful lessons from this case for applicants with inventions
relating to the technical implementation of any non-technical (eg business)

technical features must be allowed to creep into the ‘requirements’ if the
objective technical problem is to implement such requirements

technical prejudices must be taken into account, but not non-technical

need to be selected for their technical expertise, not business experience and
address the invention in the right level of generality.

first of these points is particularly useful since Examiners in this field
often formulate the technical problem in terms of requirements to be
implemented and frequently include technical points in the requirements.  However, it should be borne in mind that, if
the EPO decides to adopt the Comvik
approach to inventive step, this is a bad omen: of 30 Appeal Decisions
published this year in which this approach was taken, 26 have resulted in
refusal of the patent application. 
Although business methods are the most common form of non-technical
method, the Comvik approach also
applies to other non-technical subject matter such as abstract mathematical
methods and rules for playing games.


As a
final point, it should be noted that Brexit will not affect the EPO and its
relationship with UK patent law as the EPO has always been outside the EU
structures and includes non-EU member states. 
It is as yet unclear whether the Unitary Patent Court (UPC) will come
into operation and if it does whether the UK will remain a member
post-Brexit.  The UPC can be expected to
follow EPO case law on patentability very closely.

John Leeming is a Partner, Patent Attorney at J A Kemp. He has
over 25 years’ professional experience. He prosecutes patent applications in
the optical, electronic and software fields, with particular expertise in
semiconductor device manufacturing equipment and processes. John’s clients
range from large multinationals to smaller start-ups.

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