The Market Court issued a patent decision
453/16 on 20 July 2016. The court ruled that the applied invention (Method and system for relaying and managing call messages) is not patentable because the original patent claims are lacking novelty and they do not involve an inventive step. Furthermore, the secondary claims do not involve an inventive step.
Oy Exrei Ab (Exrei) sought patent protection on its invention called "Method and system for relaying and managing call messages" on 31 January 2006. The application consisted of three independent claims (1, 21 and 41) and dependent claims 2-20, 22-40 and 42-43. The Patent and Registration Office (PRH) granted a patent for the invention (
FI 117912) on 14 April 2007.
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| FI 117912, Fig. 2. |
Miratel Oy (Miratel) lodged an invalidation claim against the patent, but PRH dismissed the invalidation claim on 6 May 2008. Miratel then lodged an appeal at the Board of Appeal at PRH. The Board of Appeal accepted the invalidation claim and returned the case to PRH on 14 October 2011. PRH revoked the patent on 17 February 2012. According to PRH, the independent and dependent claims do not involve an inventive step.
Later on, the company name Exrei was changed to Everon Ab (Everon) and Miratel into Ascom Miratel Oy (Ascom Miratel).
Everon did not agree with the decision of PRH and lodged an appeal at the Market Court. Everon requested the Market Court to reverse the decision of PRH.
Furthermore, according to Everon, the patent application should be accepted in accordance with the claims that were under examination in the decision of PRH or, if that is not possible, in accordance with the claims attached into the appeal (independent claims 1, 17 and 33 and dependent claims 2-16, 18-32 and 34-35).
The Market Court
According to section 2 of the
Patents Act (550/1967), patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.
According to section 8 paragraph 2 of the Act, the application shall contain [inter alia] a precise statement of the subject matter for which patent protection is sought.
According to section 13 of the Act, an application for a patent may not be amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed.
According to section 25 paragraph 1 of the Act, the Patent Authority shall revoke a patent on account of an opposition [inter alia] if the patent relates to an invention that does not satisfy the requirements of section 2, or if the patent contains subject matter not included in the application as filed.
Prior Art
The prior art in this case consists of documents D1-D20 (a list with document names can be found in the decision). However, the court decided to dismiss the D4 because its publication date was not unambiguous.
The Original Patent Claims
The independent claims 1, 21 and 41 (translated with the help of US 20090016511 A1):
1. A method for relaying and managing service calls, wherein a customer terminal sends a call and a service terminal receives an assignment, characterised by transmission of the call information from the customer terminal to the server (120), in which the server-based data on the service providers comprise data for establishing a connection to the service provider's service terminal and additional service provider data, whereby a call arriving at the server activates the server's selection of a service provider on the basis of the data contained in the call (130) and said additional data (140), and to send an assignment based on the data of the call to the service terminal (150) in accordance with the contact information of the selected service provider.
21. A system for relaying and managing service calls that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments that is characterised by the system comprising a server (210) that has memory (214) for storing the information of the service providers, which comprises data for establishing a connection to the service provider's service terminal (270) and additional service provider data, with the system further comprising the means (212, 230-250) for relaying the call data from a customer terminal (230, 250) to the server (210), whereby the server is arranged to be activated on the incoming call and perform selection of a service provider on the basis of the data contained in the call and said additional data, and to send an assignment based on the data of the call to the service terminal (270) in accordance with the contact information of the selected service provider.
41. A server (210) for relaying and managing service calls in a system that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments, characterised by the server having memory (214) for storing the information of the service providers, which contains data for establishing a connection to the service provider's service terminal and additional service provider data, with the server further comprising the means (212) for receiving call data from a customer terminal, whereby the server is arranged to be activated upon the incoming call and select a service provider on the basis of the data contained in the call and the said additional data, and to send (216) an assignment based on the data of the call to the service terminal in accordance with the contact information of the selected service provider.
The court considered that all the features of the independent claim 1 are found in a prior art D1a. The D1a is an issue of a customer magazine produced by Ascom Miratel. The D1a introduces a software called CareWin. The software is used to receive safety calls and alarms. This software is, according to the court, a method for relaying and managing call messages, in which a customer terminal (safety phone) sends a call and a service terminal (caretaker of a person responsible for the service) receives an assignment and in which there is a transmission of the call information from the customer terminal to the server (CareWin-software).
The court then stated that the independent claims 21 and 41 consist of the same technical features as defined in the claim 1.
The court concluded that the independent claims 1, 21 and 41 are lacking novelty and they do not involve an inventive step.
The Secondary Patent Claims
The independent claims 1, 17 and 33 (translated with the help of US 20090016511 A1, the changes are written in
red):
1. A method for relaying and managing service calls, wherein a customer terminal sends a call and a service terminal receives an assignment, characterised by transmission of the call information from the customer terminal to the server (120), in which the server-based data on the service providers comprise data for establishing a connection to the service provider's service terminal and additional service provider data, whereby a call arriving at the server activates the server's selection of a service provider on the basis of the data contained in the call (130) and said additional data (140), whereby the said additional data comprising data concerning the services
provided by the service provider, whereby the selection of the service provider
will be based at least on the call- contained data concerning the service need
and said additional data on the services provided by the service provider, and to send an assignment based on the data of the call to the service terminal (150) in accordance with the contact information of the selected service provider, whereby the method includes
- the server comprising a log memory for storing data pertaining to calls that have arrived and/or assignments sent,
- storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and
- invoicing the customer for the services on the basis of said log data.
17. A system for relaying and managing service calls that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments that is characterised by the system comprising a server (210) that has memory (214) for storing the information of the service providers, which comprises data for establishing a connection to the service provider's service terminal (270) and additional service provider data, with the system further comprising the means (212, 230-250) for relaying the call data from a customer terminal (230, 250) to the server (210), whereby the server is arranged to be activated on the incoming call, whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and perform selection of a service provider on the basis of the data contained in the call and said additional data, and to send an assignment based on the data of the call to the service terminal (270) in accordance with the contact information of the selected service provider;
-whereby the said server of the system includes
- a log memory for storing data pertaining to calls that have arrived and/or assignments sent,
- means (214, 218) for storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and
- means (214, 218) for invoicing the customer for the services on the basis of said log data.
33. A server (210) for relaying and managing service calls in a system that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments, characterised by the server having memory (214) for storing the information of the service providers, which contains data for establishing a connection to the service provider's service terminal and additional service provider data, with the server further comprising the means (212) for receiving call data from a customer terminal, whereby the server is arranged to be activated upon the incoming call, whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and select a service provider on the basis of the data contained in the call and the said additional data, and to send (216) an assignment based on the data of the call to the service terminal in accordance with the contact information of the selected service provider;
-whereby the said server of the system includes
- a log memory for storing data pertaining to calls that have arrived and/or assignments sent,
- means (214, 218) for storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and
- means (214, 218) for invoicing the customer for the services on the basis of said log data.
Ascom Miratel argued first that the claims are amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed. Furthermore, Ascom Miratel argued also that the amended application does not contain a precise statement of the subject matter for which patent protection is sought. The court dismissed these arguments.
Now it was time to assess whether the invention, in the form of the secondary claims, is new in relation to what was known before the filing date of the patent application, and also involves an inventive step.
The secondary claim 1 defines, inter alia, how the server comprises a log memory for storing data pertaining to calls that have arrived and/or assignments sent and how the invoicing is based on the log data. The prior art D1a does not contain any information of storing data pertaining to calls that have arrived and/or assignments sent. Therefore, according to the court, the invention defined in the claim 1 is new in relation to the prior art D1a.
However, the court stated that the description of the invention does not explain any technical effect achieved based on the type of data stored and the type of log data used in the invoicing. The description only explains that the method is solving a problem regarding the automation. The court then added that also the method defined in the prior art D1a is automatized.
The court then stated that it would be obvious for the person skilled in the art to use the stored call and/or assignment data in invoicing. The person skilled in the art also understands that the software introduced in the prior art D1a might comprise a feature, or it is possible to add such a feature into the software, in which data, pertaining to calls that have arrived and/or assignments sent, is used.
Therefore, according to the court, the invention defined in the secondary claim 1 does not involve an inventive step.
The court then stated that the secondary claims 17 and 33 comprise the same technical features as the secondary claim 1. Consequently, these claims do not involve an inventive step, either.
The invention is not patentable.
The action is dismissed.
