9.2.9 The notional business person

In T 1463/11 the board introduced the notional business person. The formulation of the objective technical problem in terms of non-technical requirements raises the question of what requirements the business person (for example) can actually give to the technically skilled person. Naturally, any requirement that is purely a business matter can be included. However, in the assessment of inventive step, the business person is just as fictional as the skilled person of Art. 56 EPC. Thus, the notional business person might not do things an actual business person would. He would not require the use of the internet 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.

In T 144/11 the board followed T 1463/11 and held that the technical skilled person must receive a complete description of the business requirement, or else he would not be able to implement it and should not be providing any input in the non-technical domain.

In T 1082/13 the board held that the notional business person, as interpreted within the framework of T 641/00 knows all about the business related requirements specification and knows about the fact that such business related concepts can be implemented on a computer system. The choice of where to do a calculation in a distributed system is not necessarily technical, but can also be driven by administrative considerations. What the notional business person does not know, however, is how exactly it can be implemented on a computer system. This is in the sphere of the technical expert and subject to the assessment of inventive step. When referring to prejudices, it has to be carefully analysed, whether it is actually a technical prejudice or, in fact, a business prejudice.

In T 1408/18 the board found that a business person who wanted to offer a product enabling users to make a transaction on a single terminal device would specify that the transaction could go ahead only after user authorisation and that, in keeping with the latest trends, it would be desirable for users to be able to make all necessary entries on their smartphone. By contrast, using a TAN-based process, including dealing with how the TAN could be transmitted securely, fell within the sphere of a technical expert. Building on traditional PIN-based password authentication, using a TAN, i.e. a one-time password, added a second layer of security. The associated interaction of two applications and communication channels for obtaining and providing a TAN led to two-factor authentication guaranteeing greater security. So, regardless of how a TAN-based process was used in practice, there were technical considerations behind it that went beyond the technical understanding that could be expected of a business person.

In T 2455/13 the board endorsed the above reasoning in T 1082/13 and added that, features were not technical where they were specified merely as modules on an abstract meta level and represented functions the "non-technical skilled person" would base their idea on; after all, in outlining these functions, that person would not be considered to have dictated any technical features either. It was only once actual implementation steps had been specified in the claim that such modules could be treated as technical features.

In T 926/20, the appellant sought to differentiate its invention, which concerned the use of location-based services for assigning tasks to users, such as cleaning workers, from the situation in T 1082/13, where the time was used as a non-technical "timeout" condition. In contrast, in the invention, time was not just an administrative parameter, but also provided a technical effect that was not found in the prior art documents, according to the appellant. The board held that the term "time" as used in the claim, refered to its ordinary meaning of organising tasks based on the availability of users. This could be accomplished through the use of a timetable, and therefore, was considered an administrative function.

In T 737/14 the board held that the proper application of T 641/00 required a thorough analysis of the business constraints when formulating the problem to be solved before investigating what the skilled person would have done to solve it.

In T 817/16 the board considered that a useful test for determining whether such technical considerations were present was to ask whether the non-technical features would have been formulated by a technical person rather than by a non-technical person or persons (T 1214/09, T 1321/11, T 1463/11, T 136/13). This was not an enquiry into the actual state of technical or non-technical knowledge at the effective filing date; the question was rather whether the knowledge required for coming up with the non-technical features in the particular case was of a kind that only a technical person, i.e. a person not working exclusively in areas falling under Art. 52(2) EPC, could possess.

In T 1902/13 the board held that a business consultant, who wanted to assess the competence of an organisation, would design a set of rules and questions which could be reused for another organisation. Automating parts of this process did not render it technical. The board did not agree that the business person and the skilled programmer would have to sit together in order to elaborate a workable solution. Rather, the underlying administrative concept would be provided to the programmer as a requirements specification.

In T 1749/14 the board held that the notional business person might come up with the abstract idea of avoiding the customer having to provide PIN and account information to the merchant. The invention however required a new infrastructure, new devices and a new protocol involving technical considerations linked to modified devices and their capabilities as well as security relevant modifications of the transfer of sensitive information using new possibilities achieved by the modifications to the previously known mobile POS infrastructure. This went beyond what the notional business person knew and concerned technical implementation details which were more than a straight-forward 1:1 programming of an abstract business idea. This was in the sphere of the technical expert and subject to the assessment of inventive step (see T 1082/13).

In T 698/19 the invention proposed a system for automated pay-out of insurance premiums. The system comprised a network computer for calculating a likelihood of risk exposure, receiving and storing payments, dividing a risk into a parameterizable part and a non-parameterisable part and in case of a loss, transferring payments from both risk pools to the policy holders. The board held that the payment itself was undoubtedly a technical process, but it was motivated by a business plan or (in the image of "notional business person" versus "technically skilled person") commissioned by the notional business person and worked out by the technically skilled person in a straightforward manner. The notional business person - unlike the real business person - must not have any technical skills or knowledge about how to implement an algorithm in a computer system.

In T 524/19 an object of the invention was to provide an automated system preventing imminent grounding of aircraft fleets due to missing financial resources after risk events and to provide a systematic and automated management of risk exposure. The invention proposed determining, based on given business rules, the automatic payment of financial compensation to the affected business units, i.e. airlines and their fleets. This object was solved by monitoring relevant airport data, defining critical thresholds, and automation of cover payments in case of airport closures. The board held that since the primary technical effect of feature (T) was that a natural disaster could be detected, it could not be argued that the technical effect was "diminished" by the fact that in the final effect it served exclusively to pay out an insurance premium. In general, the primary technical effect of a non-technical feature could not be diminished by the fact that in the final effect it serves exclusively a non-technical or business purpose. This would be tantamount to imputing technical knowledge to the notional business person. If non-technical features had both a technical and a non-technical effect, the technical effect had to be taken into account when assessing inventive step (T 698/19) See also T 1439/21.

In T 2626/18 the appellant had argued that the claimed features relating to the abstract business concept could not have been provided by the business person to the technical expert for programming. The technical expert would also not have had corresponding knowledge starting from a networked standard computer system. The appellant thereby alleged that there was to be considered an imaginary third person who had come up with the concept of the invention to be implemented on a computer system. The board noted that when assessing inventive step in the field of computer-implemented business-related inventions following the COMVIK approach and the corresponding case law, there was no room for such a third expert. When analysing the features of a claim and answering the question of whether they provide a technical contribution, each such feature had to be judged to be either a contribution of the technical expert or of the non-technical business person in order to conclude whether there was an inventive technical contribution.

In T 1026/17 the board held that it was part of the non-technical requirement specification to keep keys (be it analog or electronic keys) away from people one did not trust. This did not require technical considerations of a technically skilled person. The board considered this to be an administrative consideration within the sphere of a business person when contemplating a secure tender process. It was not regarded as a technical innovation, but a natural choice for the bidders to use individual keys, hold back the keys for as long as possible and furnish them as late as possible.

In T 909/14 the board stated that according to T 1463/11 (CardinalCommerce), in the assessment of inventive step, the circumstances under which inventions are developed in the real world had to be ignored to a certain extent. The notional business person may formulate business requirements to be implemented but would not include in them any technical matter. The notional business person is a legal fiction representing a shorthand for a separation of business considerations from technical ones. The board in T 1463/11 held that using this legal fiction was the price paid for an objective assessment; a real inventor does not hold such considerations separately from one another. Under the approach established in T 1463/11, the test used in deciding on technicality of a feature was whether the notional business person could have come up with it. This boiled down to determining whether there would have been at least one way to devise it without technical considerations. If so, it did not have technical character and may form part of the requirement specification regardless of what alternative ways of arriving at it were disclosed in the application or were conceivable. This result, although unfortunate for an applicant who did actually arrive at the feature via the technical path, was not unique to the business-related exclusion. As noted in G 1/19, another example would be methods for treatment of the human body which have both patentable non-therapeutic and therapeutic uses falling within the exception to patentability under Art. 53(c) EPC (see e.g. T 1635/09, OJ  2011, 542). In the present case, the board held that providing limited functionality for some users, such as not enabling the creation of documents, was a business decision which need not be based on technical considerations.

In T 1117/19, the board held that boosting user satisfaction, for example during a live TV transmission, was generally a non-technical, administrative task that was usually within the competence of a TV channel manager as the expert.

In T 288/19 the board held that the business person sets the framework of the problem to be solved by their business model and thus reduces - by setting specific boundary conditions – the degrees of freedom of the skilled computer specialist. The technically skilled person, who has to solve the objective technical problem of implementation, therefore has no latitude in selecting the corresponding (physical) parameters.