The Board upheld the EPO's decision to refuse to grant Nokia a European patent covering the advance planning of a shopping trip using a mobile device on the basis that the claimed invention failed to give rise to "a technical effect". It said that Nokia had failed to show that its claimed patent took an 'inventive step'.
"The overall effect of the method, namely to produce an ordered list of shops, is not technical," the Board said in its judgment (21-page / 374KB PDF).
To qualify for patent protection inventions must primarily be new, take an inventive step that is not obvious and be capable of being used by industry. When assessing whether patent applications are inventive, examiners assess the "technical effect" of a claimed invention in light of the most relevant existing 'prior art'. This assessment looks at whether the technology invented solves a pre-existing problem in a manner that is not obvious.
Patent law expert Adrian Murray of Pinsent Masons, the law firm behind Out-Law.com, said: "When determining whether to grant patent applications, the European Patent Office typically looks for the claimed invention to exhibit a technical effect. However, in the case of inventions relating to computer programs and business methods – both of which are, as such, excluded from patentability under Article 52 of the European Patent Convention (EPC) – convincing the EPO that an invention is patentable is more challenging."
"This is because, when considering whether the invention exhibits a technical effect, the technical contribution made by components of the invention which are excluded from patentability by Article 52 EPC will be ignored. In contrast, for inventions which do not include components excluded from patentability, the technical contribution made by all of those components will be considered when assessing whether the invention provides a technical effect," he said.
"Further, in view of comments made by the Board of Appeal in the decision, especially the identification of three 'fallacies', it appears that it will be more of a challenge for future applicants deploying arguments of the type advanced by Nokia to establish that computer-implemented inventions and business methods do exhibit a technical effect," Murray added.
Nokia's patent application was for technology that allows users to select what goods they wish to buy before they set out on a shopping trip and then displays an itinerary for the trip based on whether the user wishes to visit the closest shops selling the products or visit the shops selling the products at the cheapest price.
Nokia had argued that its selection of a group of different retailers at a shopping location contributed to the "technical character of the invention", but the Board said that the company was trying to rely on the "technical leakage fallacy" to support its claims as to patentability. This is where "the intrinsic technical nature of the implementation leaks back into the intrinsically non-technical nature of the problem", it said.
"The 'selection of vendors' is not a technical effect and the mere 'interaction' with technical elements is not enough to make the whole process technical as required by the jurisprudence," the Board said. "Similarly, the transmission of the selection is no more than the dissemination of information, which is in itself also not technical."
Nokia had claimed that its invention had a 'technical effect' because it helped solve a logistical problem. However, the Board ruled that the "chain of effects" that led users being presented with information to that information having 'technical effect' was broken when users were asked to select navigate their own route.
"The possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user," the Board said. "This applies to the present case because any possible technical effect depends on the user's reaction to the itinerary."
Nokia had further argued that its technology had a 'technical effect' because the display of an optimised shopping route for users amounted to a "status indication about the state of a system" which has previously been adjudged to have technical effect. The Board, though, ruled that Nokia was seeking to rely on "non-technical aspects" to show the 'technical effect' of its invention.
"A technical effect may arise from either the provision of data about a technical process, regardless of the presence of a user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process," the Board said. "In the Board's view, neither applies to the present case."