T 0449/10 (Transaction processing/INTERTRUST) 22-12-2011

Reasons for the Decision

1. The appeal, although admissible, is not allowable since the main request for maintaining the patent unamended is prejudiced by the grounds of opposition under Article 100(a) in connection with Article 56 EPC 1973, and the first and second auxiliary requests for maintaining the patent in amended form concern inventions which do not involve an inventive step in the sense of Article 56 EPC 1973; the third and fourth auxiliary requests have not been admitted by the Board.

Lack of inventive step

2. Document D1 is undisputedly an appropriate starting point in the prior art for assessing inventive step. The document relates to a license management system and method for recording and controlling the use of a licensed product as summarised in the abstract of the document. The licensed product, for example computer software, a video product etc, is located at a network node on the licensee's site, which is optionally a computer connected via a computer network to a computer system at a licensor's site (cf D1, page 7, line 25 to page 8, line 6 and page 25, lines 13 to 16 in connection with figure 1). The license management method of document D1 may thus be recited, in terms of the present claim 1, as a method of granting access to a piece of content at a first computer system in a networked computing environment including the first computer system (at the licensee's site) and a second computer system (at the licensor's site).

3. Furthermore, the license management method of document D1 comprises the following steps: sending a request from the first computer system to the second computer system (request datagram 3, see figures 1 and 3, and page 11, lines 4 to 28), the request seeking permission to access the content, receiving the request at the second computer system (cf figure 3, step 107.0), determining at the second computer system whether to grant the request (step 108.0), sending a status indicator from the second computer system to the first computer system (step 109.0), the status indicator including an indication that the request has been granted (approval, authorisation code 0, see for example D1, page 24 f.), receiving the status indicator at the first computer system (step 105.0) and releasing the content to a user (step 106.0 in figure 3, cf D1, page 20, line 9 ff.).

4. At the licensee's site, a monitoring process is executed which detects whether a reply datagram has been received within a "Wait Interval" (see figures 3 and 5, 104.0 to 104.3). If the reply datagram is not received the monitoring process produces a warning (see e.g. D1, page 18, lines 22 to 26). The prior art method also provides for a termination of the monitoring process (step 105.3, see figure 5 and page 20, lines 1 to 4).

In the light of the prior art method of document D1, the invention is characterised in claims 1 of the main request and the first auxiliary request essentially by the following features (paragraphing numbers added for convenience of reference):

i. sending the first acknowledgment from the first computer system to the second computer system, the first acknowledgment indicating that the content was successfully released to the user;

ii. receiving the first acknowledgment at the second computer system;

iii. sending the second acknowledgment from the second computer system to the first computer system;

iv. receiving the second acknowledgment at the first computer system;

v. monitoring acknowledgements by

(a) detecting a second acknowledgment from the second computer system by means of the acknowledgement-monitoring process, the second acknowledgment indicating that the second computer system received a first acknowledgment from the first computer system; and

(b) sending a third acknowledgment to the second computer system by means of the acknowledgement-monitoring process if

- the second acknowledgment is not received by the first computer system in response to the first acknowledgment and if a predefined condition is satisfied (claim 1, main request), or if

- the second acknowledgment is not received by the first computer system in response to the first acknowledgment within a predefined time period (claim 1, first and second auxiliary requests), respectively.

Claim 1 of the second auxiliary request comprises the following additional features distinguishing the invention from the prior art of document D1:

vi. the acknowledgement-monitoring process comprises a background thread in a transaction processing application;

vii. the process of releasing the content to the user proceeds independently of the acknowledgement-monitoring process.

5. The conditions in feature v.(b) above for sending the third acknowledgement differs between the main request and the auxiliary requests. According to the main request there are two conditions: first, "the" second acknowledgement is not received in response to the first acknowledgment, and second, a predefined condition is satisfied. Whereas the condition of not receiving the second acknowledgement within a predefined time period according to the auxiliary requests does not pose any problems of construction, the two conditions in claim 1 of the main request require an interpretation regarding the technical meaning of these conditions.

Original claim 8 contains a similar definition including a "predefined condition". Original claim 9 dependent from claim 8 defines that "the predefined condition comprises a predetermined amount of time elapsing from the time that the first acknowledgment was sent to the remote computer system". Therefore, in absence of any other substantial differences, the subject matter of first auxiliary request may be construed as an embodiment falling under the terms of claim 1 of the main request. Lack of inventive step in respect to the first auxiliary request thus implies lack of inventive step in respect to the main request.

6. The term "acknowledgement" as used in these claims (and in the application) is another definition that requires closer consideration. In the field of computer networking and telecommunications the normal meaning of the term acknowledgement is a reply signal transmitted to indicate that some data has been received correctly.

None of the acknowledgements defined in the claims fits under such a definition.

7. According to the claim definition, feature i. above, the "first acknowledgement" indicates that the content was successfully released to the user. Thus, the primary function of the signal is not to acknowledge the receipt of a signal but to inform the second computer system, i.e. the licensor, about the successful release of the content. The side-effect that the licensor might conclude from the message that the status signal granting the previous request had correctly been received beforehand by the first computer system, i.e. the licensee, does not render the message an acknowledgement within the normal technical meaning of the term.

8. Somewhat more intricate is the construction of the "second acknowledgement", which according to feature v(a) above indeed signifies receipt of a signal. However, this feature is not consistent with the embodiments disclosed in the description. As shown in figure 3D and described at page 16, line 29 ff., the completion of the transaction, including withdrawal of funds from the consumer's account etc, is the actual event triggering the second acknowledgement, the resend-acknowledgement 336 as termed in the description. The second "acknowledgement" does not acknowledge receipt of any signal, but it is again a simple message indicating the completion of the transaction.

9. Finally, the "third acknowledgement" is only sent to the second computer system if the "second acknowledgement" has not been received, i.e. the function of this signal is the opposite of an acknowledgement; according to the embodiments disclosed in the application, the third acknowledgement is a resent first acknowledgement (cf RSCX 328 in figure 3F). It has thus the same function as the original first acknowledgement.

10. The principal function of the first, second and third acknowledgements is thus not acknowledging, but exchanging information between the respective licensing partners about the status of a licensing transaction and whether the content has been released and the payment made.

Which information and in which order such information should be exchanged between the licensing partners are determined by legal and business considerations. It is still within the realm of doing business to organise the licensing transactions and to decide what to do if a certain required piece of information has not been received by one of the partners, or provide consequences for offenses against the agreed terms or general procedure. The circumstance that the management of the licences and the distribution of content are to be conducted online through a distributed computer system and the business operations thus have to be clearly and logically organised to be implemented successfully as software on a computer system does not change the character of such activities: they essentially require knowledge in - per se non-technical - business matters.

11. The field of technology is only entered at the stage of programming and implementing a concrete software project. Technical features of such a system which follow directly from the business requirements or which can be attributed to the common technical knowledge of the skilled person in the associated fields of technology, although providing a technical contribution over the prior art, do not involve an inventive step.

12. In the light of document D1, the invention claimed is characterised by exchanging two additional signals between the licensing partners concerning the status of the transaction, namely the successful release of the content and the end of the transaction.

13. From a technical point of view exchanging such data serves no meaningful purpose; keeping record of the two additional pieces of information makes sense only under business aspects.

14. The acknowledgement-monitoring process of feature v above is a solution of a common problem in communications systems, namely that a message should, but in fact does not, arrive at the receiver. The standard procedure that faces this situation is a kind of watchdog which triggers a corrective action. Such a watchdog is implemented in document D1 for monitoring the status signal (reply datagram) from the licensor's site to the licensee (see document D1, figure 3, step 103.0 and figure 5 steps 104.1 and 104.2). Sending a warning or resending the message are possible options, but the decision for the one or the other depends on the particular organisation of the individual licensing process. The particular consequences are thus determined on the basis of business considerations rather than technical considerations.

15. Referring now to the second auxiliary request, the two additional features vi and vii concerning the acknowledgement-monitoring process and the process of releasing the content to the user do not present any new inventive aspects. It is common practice to organise software in functional subunits like functions, subroutines etc (an example is given in document D1, at page 20, line 2 ff.). Common operating systems organise processes in small units called threads that share resources but can be executed independently. Separating the release process from the monitoring process so that they "proceed independently" (feature vii above) is anticipated in document D1, where the monitoring process (license check monitor 2, see figure 1) operates independently from the functional portion (executable portion 1A), which is able to release and to render the content to the user (cf document D1, page 10, lines 15 to 30).

16. The alleged improvements regarding security are speculative. For example, the statement that the operator of the remote system will be informed and can take immediate defensive action if the local system fails to obey the instructions not to release content (page 20, line 14 ff. of the application as filed), or the statement (page 19, lines 2 to 21) that sending or resending acknowledgement 377 (i.e. the third acknowledgement in terms of claim 1) makes it more difficult to disconnect or disrupt the communication, are not conclusive. Malicious attacks on the licensing process or its corruption in general are still possible since a malicious user may intercept this monitoring process and send faked acknowledgements. There are no countermeasures in claims 1 of the present requests which could clearly reduce the danger of such threats.

17. Since technical security is not an aspect which is actually relevant in the present case it is futile to analyse the invention under such aspects as threat, asset, and countermeasure, an approach applied in the decision under appeal. Although such an approach might be helpful in particular cases, in particular if the invention addresses the technical security of information systems, it should be applied carefully since falling under the definition of a threat model does not automatically mean that the invention is excluded from patentability or per se not capable of providing an inventive contribution to the prior art.

In the present case, lack of inventive step in claims 1 of the main and the first and second auxiliary requests already follows from an analysis of the technical features and aspects of the claimed invention in the light of document D1.

Non-admission of the third and fourth auxiliary requests

18. The amendments to claims 1 according to the third and fourth auxiliary requests relate to the setting and modifying of a predefined time period provided that the first computer system sets through signals sent from the second computer system to the first computer system.

19. The appellant confirmed that the subject matter of these requests had been neither examined by the opposition division nor included in either one of the requests submitted with the statement of grounds. Neither did the appellant invoke any exceptional circumstances which could explain the late filing of these requests (after oral proceedings had been arranged).

20. Considering that the amendments were neither a response to any specific observations made by the Board nor to any new submissions by the respondent and further considering that the requests were not prima facie allowable, the Board has decided, pursuant to Articles 12(4) and 13(1) RPBA, not to admit the third and fourth auxiliary requests to the proceedings.