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Patent protection for computer system architecture: EPO Appeal Board Decision T 1658/15 “Universal merchant platform for payment authentication”

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Author´s headnotes:

  1. 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.
  2. Outsourcing a commercial transaction such as the authentication of an online purchase transaction to a different computing device cannot in all cases be abstracted to a purely business activity because it may encompass technical aspects such as the use of plug-ins and servers.
  3. If a prima-facie technical prejudice existed at the relevant date against the outsourcing of a commercial transaction such as the authentication of an online purchase transaction to a different computing device, then this outsourcing involves an inventive step.

The patent application allowed by the decision T 1658/15 of the Technical Boards of Appeal of 29 November 2016 relates to online payment systems.

To complete an online purchase transaction in such systems, the buyer has to be authenticated. The online store passes information about the intended transaction to the credit-card company, which handles the task of ensuring the buyer is entitled to use the chosen payment instrument, and which informs the online shop of the outcome of the authentication procedure. The technical implementation of this authentication involves the server of the online shop communicating with the computer of the credit-card company. This communication is according to the prior art handled by a “plug-in” in the merchant server, a piece of software specific to the particular authenticating authority and to the needs of the authentication process. Different plug-ins are provided for different payment instruments. The update and maintenance of these different authentication plug-ins requires substantial resources of the operator of the merchant server.

To overcome these problems, the claimed invention in the decided case provides a separate computer called “merchant authentication processing system” (MAPS) handling the interface functionality with the authenticating servers, which was previously handled by the corresponding plug-ins of the merchant server. The invention thus replaces the three-machine prior art (buyer computer, merchant server, authenticating server) with a four-machine system (buyer computer, merchant server, authenticating server, and merchant authentication processing system). The invention thus differs from the prior art in the system architecture, namely replacing the several plug-ins for different payment instruments at the merchant server by a separate merchant authentication processing system. The advantage achieved by the invention is to reduce the service costs for the merchant. In addition, the operator of the merchant authentication processing system can offer this service to several different merchants and thus enjoy economies of scale for operating the authentication interface service for the authentication process.

According to the established case law of the EPO (following T 0641/00: Two identities/COMVIK) only technical features of an invention comprising technical and non-technical features can contribute to the inventive step. The technical features are separated from the non-technical features. The non-technical features are implied as being known to the skilled person and only the technical features are compared with the closest prior art. It is then assessed which technical problem is solved by the distinguishing technical features and whether or not this technical solution of the technical problem would have been obvious for the skilled person at the priority date of the application.

This approach often results in a novel and non-obvious technical concept to be divided into a novel and non-obvious concept itself, which is deemed non-technical, lying in the field of business or organization, and the distinguishing technical features, which are regarded only as straightforward technical (mostly software) implementation, which is obvious for the technically skilled person leading to the refusal of the patent application. The “Comvik-Approach” thus often unduly reduces the chances of success of computer-implemented inventions compared to inventions in other technical fields.

The decision discussed here provides an approach to overcome this problem: As the skilled person is a hypothetical construction for assessing inventive step, so should be the the business person or organisation expert providing the non-obvious, but non-technical concept. This business person in the Board´s view “represents an abstraction or shorthand for a separation of business considerations from technical” and as such should – different from a real business person – not have any technical knowledge or capability for technical considerations. The Board states:

“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.

Similarly, 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, as is alleged in this case (see below). If this were not the case, business requirements would need to be evaluated and would contribute to inventive step, contrary to the Comvik principle.”

Applying these principles to the concrete case, the Board finds “that the transaction authentication in the present case cannot be abstracted to a purely business activity because it has aspects such as the use of plug-ins and servers.” Therefore, “the decision to centralise the plug-ins in a separate server that can be accessed by several merchant servers, in order to simplify installation and maintenance and reduce load, should be considered a technical matter”.

The Board considered that it might have been obvious for the skilled person seeking to simplify the merchant server or the installation or updating of plug-ins to locate the authentication interface functionality at a separate server that could be accessed by various merchants’ servers. On the other hand, at the priority date of the application a number of technical considerations spoke against relocation of the plug-ins, as increased latency, increased bandwidth requirements and security considerations. On balance, the Board concluded, there existed “a prima facie case for technical prejudice” against relocating the plug-ins to a separate server and the invention thus is to be regarded as involving an inventive step.

According to the Board´s decision, the selection of a favorable system architecture for a particular technical issue is thus to be regarded as a patentable invention if its technical implementation is not obvious even if such system architecture may be regarded obvious from a business perspective.

The technical problem solved by the claimed invention in the decided case can thus not simply be formulated as “to reduce the maintenance and update requirements of the merchant server” as this would be not a technical, but a commercial problem. The business person intending to solve this commercial problem would in turn formulate for the technically skilled person the technical problem “to provide a technical solution to reduce maintenance and update requirements of the merchant server”. The skilled person would thus consider – independently from any business considerations – different options to solve this technical problem, including amendments at the level of the merchant server itself as well as changes of the system architecture. As the Board found, the provision of the particular system architecture of the claimed invention, namely to provide a separate merchant authentication processing system handling the interface functionality with the authenticating servers, was not obvious for the skilled person at the priority date.

This decision may also prove to be helpful for inventors seeking to obtain patent protection in Europe for distributed or serverless applications based on distributed-ledger or blockchain technologies if the application of these technologies for the particular task was not technically obvious at the respective priority date.

Why patents are still needed: A response to the title story “Set innovation free!” published by the Economist on 8 August 2015

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The Economist published in this week´s issue (8 August 2015; http://t.co/vooavJq1np)  a cover story consisting of an editorial and a more detailed article challenging the effectiveness of the patent system to achieve its purpose, namely to foster innovation. As reasons for this failure the newspaper cites the abuse of the system by so-called “patent trolls” threatening businesses with lawsuits based on dubious patents and the alleged skills of patent lawyers to obscure rather than to disclose to the public the inventions protected by the respective patents.

As empiric evidence in favour or against the effictiveness of patents is notoriously hard to come by, the Economist concludes: “But a top-to-bottom re-examination of whether patents and other forms of intellectual-property protection actually do their job, and even whether they deserve to exist, is long overdue.” In the meantime the Economist suggests to reduce patent lifetimes, in particular in fast-moving technical areas as computer technology, and to run experiments with other forms of financing innovation alongside the patent system. While the former would deprive of protection inventors being ahead of their time such that their inventions become commercially relevant only towards the end of a patent´s 20-year lifetime, the latter suggestion surely sounds like a good idea. Governments could increase funding for reasearch (e.g. into drugs against rare diseases, which are not profitable for pharmaceutical companies) and publish the results without filing a patent application, thus handing over the publicly financed innovation to the public domain. This, however, can be done without any change of the current patent system.

In the discussion of the pros and cons of patents, however, I always and in this article in particular miss one point, namely the capability of patents to transform innovation into a defined, tradable asset.

Patent attorneys do the work of dissecting innovation into defined, manageable pieces and the examiners at the patent offices do the work of verifying whether or not a claimed invention is really new and non-obvious. Without patents, innovation can come only in two forms, either being published and thus part of the public domain and no longer a tradable asset, or kept secret by the innovator. A transaction to sell such kept-secret innovation would be enormously complex as the work to define the parts of the innovation/new technology being subject to the transaction and the work to value it would have to be done from scratch by the transaction parties thermselves, and without the help of patent databases. The information asymmetry between the innovator and potential technology seller keeping the secret about the (allegedly) newly developed technology and the potential technology buyer having no such knowledge would complicate things further.

Without patents, innovation would thus be a largely illiquid asset. For the economy as a whole the costs of the illiquidity of new technology as an asset would in my view by far outweigh the costs associated with patent lawsuits, in which only a tiny proportion of all granted patents are involved. I had expected that in particular the Economist, an outspoken supporter of free trade, would have taken into account this vital role of the patent system.