T 1439/21 (Elderly illness insurance scheme) 12-11-2024

1. The appeal is admissible.

2. Essential arguments of the examining division

The examining division noted that the subject-matter of claim 1 and the problem to be solved by the application was related to the business per se, i.e. a non-technical requirement, of providing an insurance scheme. The solution proposed by the application consisted, at a business level, of defining a set of threshold parameters related with elderly illnesses which, when exceeded, triggered a dynamic adjustment of the insurance premiums/a dynamic determination of the payouts (contested decision, points 9.3 to 9.5).

In addition, the examining division set out that certain terms used in claim 1 like "system", "modules", "components", "engines", "multi-layered data structure", "triggers", "measuring system", "(measuring) parameters" and "patient dataflow pathway" only represented non-technical aspects of that insurance scheme in the context of the application (contested decision, points 9.12 and 9.12.1 to 9.12.6). Any dynamic adaptation as claimed merely related to the dynamic adaptation of the non-technical parameters of the insurance scheme, for instance, dynamically changing insurance premiums or payouts (see point 9.12.7).

Referring, inter alia, to decision T 258/03, the examining division noted that the application did not propose any technical solution to a technical problem (point 9.7 of the contested decision).

The technical aspects of claim 1 did not go beyond specifying that the system was "completely automated". Thus, implicitly, a networked computer system was used to support/execute the non-technical insurance scheme. Such networked computer systems were notoriously known, and the skilled person, made aware of the non-technical insurance scheme, would have implemented this scheme on such a networked computer system without the exercise of an inventive activity (contested decision, point 9.6).

The examining division noted furthermore that D1 provided an example of a networked computer system implementing a non-technical business method similar to the one of the application (point 9.23 of the contested decision). The examining division emphasised that D1 was not considered to be the closest prior art.

3. Essential submissions of the appellant

The appellant conceded that the overall aim of the invention was an improved insurance scheme. However, it argued that non-technical features could also contribute to technicality as set out in decision G 01/19 (case (iii) as listed in point 33. of that decision).

Insurance schemes were generally developed by teams involving a number of business persons as well as technically skilled persons. Classical insurance schemes could not be automated in a straightforward manner, at least not easily in such a way that they were dynamic. Instead, to enable such an automation, a technically skilled person, i.e. a computer specialist, had to suggest an improved solution. The contribution of the technically skilled person contributed to the technical character of the invention. This contribution could thus not be incorporated into the non-technical requirement specification to be given to the technically skilled person(s) by the business person(s) during the development of an insurance scheme. Instead, the contribution had to be considered when assessing whether or not the invention was based on an inventive step in view of the closest prior art.

In contrast, the examining division had, in the first step of defining the features that contributed to the technical character of the invention, classified "in a sweeping manner" all features except the networked computer system as non-technical. In that manner, the examining division had not taken into account the contribution of the technically skilled person in the second step of assessing whether or not the invention was based on an inventive step in view of the closest prior art.

In claim 1, there were three distinct features which represented a contribution of the technically skilled person, namely:

(i) the selection of the appropriate measuring parameters and triggers

(ii) the dynamic monitoring of the patients

(iii) that the non-covariant occurring risks were kept relatively small

These contributions of the technically skilled person made it possible to provide an automated dynamic insurance scheme taking into account a changing environment and changing risks, including corresponding dynamic changes of, e.g. premiums and payouts. This ensured that there were always enough resources in the pooling system. The claimed system was distinguished from systems in which the risk did not change and which were based on the principle that parties are liable for damages caused by them, such as car insurance systems.

The contributions of the technically skilled person should be taken into account when assessing whether or not the invention was based on an inventive step in view of the closest prior art. Therefore, a generally known networked computer system was not suitable as the closest prior art. Instead, D1 should be considered to represent the closest prior art because it was closer to the claimed invention.

Since inventive step starting from D1 had not been appropriately discussed by the examining division, the case should be remitted to the examining division for further prosecution.

4. The board's finding

4.1 Non-exclusion from patentability

Claim 1 of the sole request is directed at a completely automated system (feature A) and involves transmission of data between different entities/system (feature K1). Its subject-matter therefore comprises, at least implicitly, a networked computer system, as set out by the examining division (points 9.6 and 9.14 of the contested decision). Thus, its subject-matter is not excluded from patentability under Article 52(2) and (3) EPC, in line with the arguments of the examining division and the appellant.

4.2 Mixed-type invention

However, the overall aim of the subject-matter of claim 1 is the provision of an (improved) insurance scheme, as set out by the examining division and conceded by the appellant. As a matter of course, claim 1 contains insurance aspects that, apart from their implementation on a networked computer system as mentioned above, undoubtedly do not contribute to the solution of a technical problem.

Such aspects are, for instance, requests for payments from risk exposure components (feature N), receiving such payments (feature B), pooling of risks (feature M), providing risk protection based on the payments (feature D) and payment transfers from the pooling system to risk exposure components (feature T) on the basis of the occurrence of an insured risk (features Q and S).

Claim 1 thus contains a mix of technical and non-technical features. The board notes that this was not contested by the appellant.

4.3 Technical/non-technical features

Inventive step can be based only on technical features (see Case Law of the Boards of Appeal, 10th edn. 2022 (Case Law), section I.D.9.1., second paragraph). Thus, the features that contribute to the technical character of the invention have to be determined in a first step before, in a second step, assessing whether or not the invention is based on an inventive step in view of the closest prior art, in line with the submissions of the appellant.

4.3.1 The board accepts the argument of the appellant that features which are per se non-technical can (under certain conditions) nevertheless contribute to technicality. This is explained in section 33. of decision G 01/19 (OJ EPO 2021, 77) and is in line with Case Law (sections I.D.9.2.4 and I.D.9.2.5).

However, claim 1 underlying the contested decision does not comprise any such features as is set out in the following.

4.3.2 As mentioned above, the overall aim of the claimed automated system is to provide an (automated) insurance scheme.

As explained in the application (page 1, second paragraph), the general idea of an insurance scheme is to transfer and pool the risk of loss from a plurality of risk-exposed entities (e.g. individual persons) to a dedicated pooling entity or system (risk transfer). Such insurance schemes per se are first and foremost pure business models. This is reflected in claim 1 by features N, B, M, D, T, Q and S as mentioned above.

4.3.3 One key aspect of any insurance scheme is the calculation of the insurance rates (or premiums) to be paid by the participating individual persons. This requires calculating the likelihood with which events occur that will cause payments to the insured individual persons, together with the amounts of these payments. Features L and P directly relate to such risk calculations.

This kind of risk assessment is at the very heart of each and every insurance scheme. Thus, in the view of the board, all related aspects have to be considered to be in the realm of the (insurance) business person skilled in financial mathematics.

4.3.4 Such aspects comprise a statistical analysis of data (for instance, in the case of life insurances, an analysis of mortality tables). This statistical analysis makes use of correlations (for instance, in the case of car insurances, the correlation between the likelihood of causing a car accident and age as well as gender; the likelihood of causing a car accident being much higher for a 20-year old male driver than for a 40-year old female driver) and may, depending on the insurance scheme, dynamically take into account changes in the overall environment (for example, when overall less accidents occur in a given time period, the insurance rates may go down for the next time period) as well as events occurring at the level of the individual (e.g. when an individual driver causes an accident, their individual insurance rate may go up).

Thus, the dynamical aspects of claim 1 are part of the insurance scheme and have no technical character per se, as set out by the examining division. These aspects are stated in feature A and further expressed in features M and O of claim 1.

As a side remark, it follows from the examples given in this section that car insurance systems usually take into account a changing environment and changing risks, contrary to the submission of the appellant.

4.3.5 The selection of the insured risks (for instance, car accidents or specific illnesses) as well as of changes and events that are to be taken into account dynamically by an insurance scheme defines what exactly is insured. It is thus directly linked to the assessment of risk in that insurance scheme, concerns a modification of it per se and relates therefore to a task that is in the realm of the business person. Features F, F1, F2, G, H, I and J concern such selections.

4.3.6 To be able to take into account changes in the overall environment or events occurring at the level of the individual, the occurrence of these changes and events must somehow be fed into the particular insurance system. Thus, in any dynamic insurance scheme, the relevant data has to be conveyed to the insurer. This relates to a modification of the insurance scheme per se and does not contribute to the solution of any technical problem. This applies in particular to features K, K1 and K2.

4.3.7 The decision to keep the proportion of the non-covariant occurring risks small as defined in feature R is directly linked to the statistical analysis of data making use of correlations that relate to risk assessment as set out above (see sections 4.3.3 and 4.3.4). It thus represents a modification of the insurance scheme per se and is therefore a task for the (insurance) business person skilled in financial mathematics. It does not contribute to the solution of a technical problem.

4.3.8 The board is not convinced that at the filing date of the application, classical insurance schemes could not be automated in a straightforward manner such that they were dynamic (as is the case, for instance, for car insurance schemes), contrary to the submission of the appellant.

Hence, the board is not convinced, either, that the three distinct features (i), (ii) and (iii) which, according to the appellant, were contributed by the technically skilled person (see point 3. above), actually made it possible, or in other words, were required from a technical point of view, to provide an automated dynamic insurance scheme taking into account a changing environment and changing risks, also contrary to the submission of the appellant.

The board notes that features (i), (ii) and (iii) relate to modifications of the insurance scheme per se, as set out above (for feature (i), see section 4.3.5; for feature (ii), see section 4.3.6; for feature (iii), see section 4.3.7). Thus, even if they actually made the automation of a dynamic insurance scheme possible as submitted by the appellant, features (i), (ii) and (iii) would nevertheless only have to be considered features aiming to circumvent a particular technical problem, in line with Headnote II. of decision T 258/03 referred to by the examining division.

The board further notes that the problem (mentioned by the appellant) of ensuring that there were always enough resources in the pooling system is not a technical problem but a task for the business person. In addition, this is a requirement each and every insurance scheme should be, from a business point of view, designed to comply with.

4.3.9 It follows from the above that features (i), (ii) and (iii) which, according to the appellant, were contributed by the technically skilled person, actually do not contribute to the solution of any technical problem. They are therefore not to be taken into account for assessing inventive step.

4.3.10 In real life, a person skilled in financial mathematics will have some notions of technical aspects, and the computer expert working for an insurance company will have some notions of business aspects of insurance schemes.

Thus, the board does not doubt that in real life during insu rance scheme developments by mixed teams consisting of business persons and technically skilled persons, contributions to business aspects of an insurance scheme may be made by technically skilled persons, as submitted by the appellant.

However, for deciding whether a feature is technical or not for assessing inventive step under the EPC, it is not relevant which person makes the contri bution in real life. Instead, it is relevant whether the feature provides a technical effect and thus contr ibutes to the solution of a technical problem or not or, in other words, whether it falls into the realm of the fictitious business person or the fictitious technically skilled person.

Since each of features (i), (ii) and (iii) solely relates to a property of the insurance scheme constituting the overall aim of the application, they have to be considered non-technical features. Thus, they are not to be considered for assessing inventive step, in line with the contested decision and contrary to the submissions of the appellant.

4.3.11 The board notes that the terminology used in the application does not change this assessment. The terms "components", "measurement parameters" or "triggers" may sound technical. Similarly, the "dynamic monitoring" of these parameters or triggers by means of "measurement systems" conveys the impression that physical parameters are measured by technical devices.

In the context of the application, however, these terms do not represent any technical features. For instance, the "risk exposure components" are, in the context of the application, insured persons (see figure 1). In a similar manner, the "measurement systems" are not technical measuring devices (or "Messger te", see point C (ii) a), second paragraph of the statement setting out the grounds of appeal). Instead, they may simply be hospital entities reporting patient data to the insurer (see point 9.12.6 of the contested decision).

Thus, the terms used in the application that in a technical context would have had a technical meaning instead have, in the insurance context of the application, a non-technical meaning.

Therefore, the "technical" terminology used in the application for some aspects of the insurance scheme does not lend any technical character to the respective features in substance. Instead, it only creates a misleading appearance or perception of technical character.

4.3.12 As a result, the board cannot see any interaction between the features defining the dynamic insurance scheme and the networked computer system used to automate it, as set out by the examining division (contested decision, point 9.14). However, an interaction between these features such that a technical problem is solved would be required in order to acknowledge a contribution to technical character by non-technical features (G 1/19, point 33, case (iii) referred to by the appellant, principle (F); see also Case Law, section. I.D.9.2.4 and I.D.9.2.5).

It follows from the above that the networked computer system is the only technical feature of claim 1.

4.3.13 The closest prior art as a suitable starting point for assessing inventive step is chosen such that it has the most relevant technical features in common with the claimed invention. In addition, the closest prior art is chosen such that it is conceived for the same purpose or aims at the same objective as the claimed invention (see Case Law, section I.D.3.1).

In the current case, however, the purpose and the objective of the claimed invention is the provision of an insurance scheme and thus a non-technical one. Since the non-technical aspects of the claimed invention are not to be taken into account for assessing inventive step, the non-technical purpose and objective of the claimed invention need not be taken into account for choosing the closest prior art.

4.3.14 The board is aware that D1 not only discloses the sole technical feature of claim 1 but also most, if not all, of its non-technical features (see, for instance, paragraph [11] of D1 disclosing that the proportion of the non-covariant occurring risks is kept small). D1 even uses the same terminology as the application. Therefore, D1, which was cited in the international search report and was thus present throughout the whole first-instance proceedings, would without doubt have constituted a suitable starting point for the assessment of inventive step, in line with the submissions of the appellant.

4.3.15 However, as set out above, the non-technical aspects of the claimed invention are not taken into account for assessing inventive step.

Hence, in the case at hand, a generally known networked computer system constitutes a suitable starting point as well since it corresponds to the only technical feature of the claim, in line with the contested decision but contrary to the submission of the appellant.

4.3.16 In addition, the board is not aware of any requirement in the EPC that one of the documents cited in the search report or any other prior-art document must be used as the closest prior art when assessing inventive step.

Thus, the board does not find fault with the procedure of the examining division to use D1 only as an example of a networked computer system implementing a non-technical business method similar to the one of the application. It was not necessary to discuss inventive step starting from D1 as the closest prior art, contrary to the submission of the appellant. In fact, the examining division did not even need to refer to D1 at all since it based the problem-solution approach on different prior art.

4.3.17 At the abstract, even implicit, level claimed, networked computer systems were notoriously known (that is, they indisputably formed part of the common general know ledge) at the filing date of the current applica tion (9 October 2015). This was not contested by the appellant.

Thus, in this case, an objection of inventive step can be raised without documented prior art (Case Law, section IV.B.4.1.3 a)).

4.3.18 The subject-matter of claim 1 differs from such a notoriously known networked computer system by the non-technical insurance scheme as defined in claim 1. This scheme may be incorporated, as a requirement specification that is to be implemented, into the formulation of the objective technical problem to be solved (Case Law, section I.D.9.2.3).

The objective technical problem may then be formulated as how to implement the non-technical insurance scheme defined in claim 1 in the generally known networked computer system.

4.3.19 The board does not see any difficulties which would require the exercise of an inventive step that the technically skilled person would encounter when trying to solve this objective technical problem. The skilled person would thus program the known networked computer system accordingly in an obvious manner, using common general knowledge. The board notes that the appellant did not make any submission on such difficulties.

Hence, the subject-matter of claim 1 is not inventive under Article 56 EPC.

4.3.20 Claim 17 corresponds to claim 1. Consequently, the same arguments apply, and the subject-matter of claim 17 is not inventive under Article 56 EPC, either.

5. Conclusion

The subject-matter of the independent claims of the sole request is not inventive. Hence, there is no basis for a remittal to the examining division for further prosecution, as requested by the appellant. Thus, the appeal must fail.