T 0690/06 (Financial records/AUKOL) 24-04-2007

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse European patent application No. 02767678.2.

II. According to the decision appealed, the subject-matter of claims 1 to 9 (in the version of 8 July 2005) did not involve an inventive step having regard to common general knowledge. A search had neither been performed in the International phase nor in the European phase of the procedure.

III. Claim 1 reads:

"A computer system for monitoring financial records for a plurality of users (5) and for giving a plurality of mutually independent financial service providers (6) selective access to the financial records, the system comprising a database (2) partitioned into areas each of which is allocated to a respective user (5), a processor for writing data to and reading data from the database (2), computer network connections (4) coupling the processor to each user (5) and each financial service provider (6), a user access control system which is arranged to give a user access via the processor only to the respective data storage area such that each user (5) can only update and read financial data stored in the respective data storage area, and a financial service provider access control system which is arranged to give a financial service provider (6) at least read access via the processor to a data storage area only if that financial service provider (6) is authorised by the user (5) to which that data storage area has been allocated."

Independent claim 9 is directed to a corresponding "method for maintaining financial records".

IV. The appellants request that:

- the decision be set aside,

- the case be remitted to the examining division for a search for prior art to be carried out,

- the appeal fee be reimbursed.

Unless the case is remitted the appellants further request that oral proceedings before the Board be held and that certain questions on the no-search issue be referred to the Enlarged Board of Appeal.

V. The appellants' arguments can be summarized as follows:

During the International phase the EPO acting as International Searching Authority (ISA) declined to carry out a search, citing Rule 39.1 and Article 17(2)(a)(i),(ii) PCT in support of its position. The ISA indicated that it was declining to search the claims on the basis that they related to a presentation of information. That was not a sufficient reason, given that the invention did not relate to a mere presentation of information as stated in Rule 39.1(v) PCT. If the application had been filed directly as a European patent application instead of as a PCT application the appellants would have had a legitimate expectation that the EPO would carry out a search, because it would be inappropriate to decline to search under Rule 45 EPC given that a search would always be meaningful if novelty and inventive step were to be considered. Therefore, in the interest of obtaining uniformity of procedure between directly filed European applications and Euro-PCT applications, an additional search should have been carried out in accordance with the "Guidelines for Examination in the European Patent Office" C-VI, 8.5.

In order to consider inventive step the closest prior art must be identified. The closest prior art could only be properly identified by the EPO carrying out a search to locate relevant prior art. Without such a search the closest prior art could not be identified, and the problem and solution approach could therefore not be correctly applied. In the present case, no search had been carried out, but the examining division had nevertheless considered inventive step. This was wrong. The assessment of inventive step was based on what "appeared" to be the closest prior art (cf the decision under appeal, p.4 par.3). What was said to appear to be the closest prior art was a vaguely described networked computer system, the details of which were not evidenced.

The conduct of the examining division in refusing the application on the basis of inventive step without carrying out a search was wrong on two counts: it was wrong to make unsubstantiated allegations of prior art without providing documentary evidence of the same to the appellants, and it was wrong to assess inventive step without concrete knowledge of what actually was the prior art.

Considering the first error, it was clear that where prior art was contended to exist, the person making such a contention must prove its existence. The appellants had been provided with no evidence that prior art as described by the examining division existed. The application had therefore been refused on the basis of an inventive step assessment based upon a mere contention. The examining division went further and contended that the described prior art was part of the common general knowledge and did not require written evidence. This was wrong. As made clear in decision T 766/91 (not published in OJ EPO), common general knowledge was represented by basic handbooks and textbooks. Thus, to successfully make out that the alleged prior art was in fact common general knowledge the examining division would have needed to provide evidence in the form of such handbooks or textbooks. It was clear that where an assertion that something was part of the common general knowledge was challenged, the person making the assertion must provide proof that the alleged subject-matter indeed did form part of the common general knowledge, cf T 438/97 (not published in OJ EPO).

The approach applied by the examining division caused further problems. Specifically, what exactly did the alleged prior art disclose? If this was not known definitively, as was the case here, application of the problem and solution approach became impossible. Indeed, it was fundamental to the operation of the EPO that a party be provided with an opportunity to comment on prior art which was alleged to be relevant to a patent application. Such an opportunity afforded an applicant the opportunity to read the prior art and consider its disclosure before assessing the relevance of the disclosure to the application. Where an application was processed without a search being carried out and unsubstantiated allegations of prior art were made, this was of course impossible. Thus, the approach to inventive step employed by the examining division was fundamentally flawed. Inventive step could not be assessed without a clear understanding of the closest prior art. This required that a search was carried out.

In so far as the appellants were able to understand the examining division's unsubstantiated allegations, the prior art simply comprised a database which was assessable from a general purpose networked computer system. The detailed implementation of such a system was not known, given that no evidence had been provided. Starting from the alleged prior art, the technical problem which the invention was directed to solve was how to provide improved access control for the database. Controlling user access to a database was necessarily a technical problem. The invention provided a computer system in which controlled access to a database was provided to two distinct groups of users, viz financial service providers and users. The nature of the controlled access provided was based upon a relationship between the two distinct groups of users. The user access control system and the financial service provider access control system required by the claim were both technical features and both lay firmly in the technical field of database access control. Accordingly it was clear that these features provided a technical solution.

Reimbursement of the appeal fee was equitable given that the application was refused under Article 56 EPC without a search having been carried out, which constituted a substantial procedural violation. Even if the examining division believed that the technical features were notoriously well known they failed to include such reasoning in the decision under appeal, which represented a further substantial procedural violation.