T 1072/11: Matching unit comprising two computer entities directly connected to a shared memory storing pre-calculated values/ NASDAQ

For European patent attorneys like myself who are serving clients in tech fields where patent eligibility is an important consideration, this decision appears to be a (very) important one and a much welcomed – because, sometimes, we face strenuous objections when it is alleged that certain knowledge of a skilled person was “notorious” at the time when our clients applied for their patents.

Reasons for the Decision

In the reasons for the Decision in T 1072/11, the Boards reasoned in the following way:

“The Board is aware of computer processors comprising a coprocessor as well as first and second level cache memory, which have been used for special tasks already before the priority date of the present application, including improving processing power and dealing with real time constraints. However, the Board is not convinced that this has been notorious knowledge of the skilled person. Therefore a look into the prior art is necessary. (Reasons for the Decision 3., emphasis added)

However, according to the jurisprudence of the Boards an additional search for pertinent prior art may be dispensed with only if the technical features of the claims are considered to be "notorious", i.e. generic and so well known that they cannot reasonably be refuted (see T 1411/08 of 6 June 2011, point 4; T 2299/10 of 31 March 2014, point 4.5). In the Board's judgment, the aforementioned distinguishing features (see points 2.5 and 2.8) go beyond the mere notorious knowledge (for example the commonly encountered use of a computer, a network, an electronic database) and cannot be considered "notorious". In particular, it is not considered to be notorious knowledge to use a second computer entity within a first computer entity both directly connected to a shared memory which stores pre-calculated data. (Reasons for the Decision 3.2; emphasis added)

Thus, present claim 1 cannot be definitively assessed for inventive step without knowledge of the relevant documented prior art. Thus, the main request requires a search for relevant prior art. Hence the matter must be remitted for an additional search and further examination.” (Reasons for the Decision 3.2; emphasis added)

Key takeaways

One key takeaway from this decision is that the use of known computer processors and memory for “special tasks” may indeed qualify as “non-notorious”. If said use is “non-notorious”, prior art must be considered for assessing inventive step. In such situation, the EPO examiner cannot and must not omit from performing a search for prior art in order to assess the obviousness/non-obviousness, i.e. the inventive step.  

Force the EPO to do its job, i.e. search for relevant art

Therefore, if an applicant faces a strenuous use of “notorious” knowledge the applicant may advantageously try to convince the EPO examiner that the claimed subject-matter is indeed “non-notorious” and if this argument is successful this will, in turn, trigger a requirement on the EPO examiner to search for pertinent prior art to assess the inventive step!

In my humble opinion,

Christian Arkelius

Partner and European Patent Attorney at STR?M & GULLIKSSON AB