The underlying application of this decision is to allow potential users of a web service to access only certain parts of the available functionality in order to reduce resource consumption. However, the European Patent Office refused to grant a patent because claim 1 is mainly about the implementation of a business decision. Here are the practical lessons of decision T 0909/14 (Web service without initial storage/MICROSOFT) of June 3, 2022 of the Technical Board of Appeal 3.5.01:
Key points to remember
Features, even if based on technical considerations, can be considered non-technical if they can be designed from a business decision.
A UI simulation is considered an informational representation and therefore non-technical.
The application underlying this decision primarily concerns optimizing the use of resources (e.g. server resources) of web services by limiting corresponding functionality based on a user’s account status (c i.e. full or light/prospective). While a full user can take full advantage of the capabilities of the services due to the corresponding allocated resources, a light user can only use some (i.e. reduced) functionality of the service. The application handles a situation where a full user invites another (potential) user to the web service. A light profile can be created for the potential user allowing the potential user to use a limited set of features through a simulated user interface. If the potential user expresses the intention to make full use of the capabilities of the web service, the corresponding resources can be allocated on the server and the user interface of the potential user will be updated accordingly. Therefore, resources are allocated only to those types of users who intend to fully utilize the capabilities of the web service.
Figure 5 of WO 2009/045757 A1
Here is how the invention is defined in claim 1 of the main request:
Is it technical?
For the assessment of the inventive step, the competent chamber started from the prior art document D5, relating to the sharing of a service in which all the users have accounts of a first type (i.e. say full user). It is common ground that D5 only discloses the first part of the preamble (underlined part) and characteristic 4.
According to the Commission, the main point of the dispute is:
“Let the discrimination between full users and potential users with limited functionality be the solution to the resource-saving technical problem or a non-technical requirement that might be considered by the businessman.”
The plaintiff argued:
“The key idea of distinguishing between full users and potential users with less resources came from technical considerations of saving server resources, e.g. storage space for document metadata and this does not could not be attributed to the businessman.”
Further, the plaintiff argued:
“Presenting a simulated full user interface to a potential user was also technically driven. This allowed a potential user to see the full user interface from the start so that they didn’t need to explore its functionality from scratch after becoming a full user. This had the technical effect of increasing the usability of the service and reducing the time the full user needed to explore the interface after the upgrade and, therefore, power consumption.
The plaintiff concluded:
“Even if creating a pool of potential users with fewer features was part of the business scheme, it still wouldn’t have been obvious to reduce the resources given to those users.”
However, the Board did not follow the applicant’s arguments. The board referred to decision T 1463/11 (introduction of the fictitious businessman) and stated:
“Under the CardinalCommerce approach, the test used to decide how technical a feature is is whether the theoretical businessman could have invented it. least one way to design it without technical considerations.
Therefore, even if one arrived at the feature based on technical considerations, the feature would still be considered non-technical. The Council concluded:
“Providing limited functionality to certain users, such as not allowing document creation, is a business decision that need not be based on technical considerations. There are apparent business reasons for doing so, such as charging the full user a higher subscription fee than the potential user.
With respect to reduced resource usage, the Commission stated that the saving of computing resources (eg, storage space for metadata, as argued by the applicant) should be considered technical. However, the Commission argued that this is neither claimed nor disclosed in the application. In contrast, claim 1 refers only to saving resources on the server, which may also relate to limiting resources to reduce costs.
The board also did not follow the applicant’s arguments regarding the alleged technical effect achieved by simulating the user interface and referred to the “broken technical chain fallacy” of decision T 1670/07. According to the Commission, the simulation of the user interface relates to the presentation of information and is therefore not based on any technical consideration.
Accordingly, the Commission stated that the fictitious businessman would have instructed the skilled person to implement a non-technical business scheme based on the D5 system, which would have been obvious to the skilled person.
Consequently, the board dismissed the appeal for lack of inventive step.
You can read the full decision here: T 0909/14 (Web service without initial storage/MICROSOFT) of June 3, 2022.