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Upselling - A Business Method Patent Rejected in the US and the EPO

Since the decision of the US Supreme Court in Alice Corp v CLS Bank[1], there has been much commentary comparing its ratio decidendi to the case law and practice of the EPO. It is therefore interesting to compare a post-Alice opinion of the district Court of Delaware and a decision of the EPO Technical Board of Appeal on essentially the same patent. US Patent 6,055,513 was held by the district Court to be directed to non-patent eligible subject matter, whilst corresponding European Patent Application 1,062,610 was refused by the Board of Appeal.

Is an abstract concept per Alice the same as a non-technical invention per the EPO?  Does the Alice requirement for the claim to include something ‘significantly more’ than an abstract idea equate to the EPO requirement for an invention in the technical implementation of a non-technical process?  Does the two step test of Alice have the same result as to the EPO’s disregarding of non-technical features? 

It is therefore interesting to compare a post-Alice opinion of the district Court of Delaware and a decision of the EPO Technical Board of Appeal on essentially the same patent.  US Patent 6,055,513 was held by the district Court of Delaware to be directed to non-patent eligible subject matter in Tuxis Technologies, LLC v Amazon.com Inc[2] whilst corresponding European Patent Application 1,062,610 was refused by Technical Board of Appeal 3.5.01[3].  We compare below the grounds on which the Delaware Court and the EPO Board of Appeal reached their respective decisions.


The invention at issue concerns the process of ‘upselling’ whereby a purchaser seeks one item and the sales person attempts to sell them something additional or different.  The invention in particular is said to relate to upselling in a remote commerce, ‘such as in telemarketing (either inbound or outbound) and in electronic commerce’.  In the US proceedings claim 1 was considered representative of all claims asserted and reads as follows:

            A method for providing offers in real time of an item constituting a good or a service in the form of offers for purchase of the item to prospective customers as users of the system, utilizing an electronic communications device, comprising the steps of:

            establishing a communication via the electronic communications device between the user and the system for [the] purpose of a user initiated primary transaction for purchase of a specific good or service,

            obtaining primary transaction data with respect to the primary transaction, including the identity of the prospective customer and of the good or service for purchase in the primary transaction,

            generating an upsell offer as a result of the user initiated primary transaction by:

            utilizing the identity of the prospective customer to obtain at least a second data element relating to the user,

            utilizing at least in part the primary transaction data including the identity of the good or service of the primary transaction and the second data element and determining at least one item for a prospective upsell transaction with the prospective customer, and

            offering the item to the prospective customer and receiving an acceptance of the offer from at least one user in real time during the course of the user initiated communication.

The US Patent was asserted against Amazon, inter alia, who filed a motion to ‘dismiss for failure to state a claim’ which was the subject of oral arguments on 23 May 2014. 

The European proceedings arose out of refusal of the European application by the Examining Division which was appealed to a Technical Board of Appeal.  The broadest claim (main request) considered by the EPO was very similar to claim 1 of the US patent.  Aside from minor differences of terminology and reference numerals as are common in European claims, the most significant differences between the European claim and the American claim were that the European claim was directed to a “method of operating a computer” and the upsell that is offered to the customer is an “optimum upsell transaction”.

Abstract v Non-Technical

Unfortunately neither the EPO Board of Appeal Decision nor the Delaware Court Opinion give any useful analysis of what might be meant by the terms “non-technical” and “abstract” respectively.  In the US Judgement, the patent proprietor accepted that upselling is an abstract idea, arguing instead that the claims were “patent eligible because they are meaningfully limited and do not pre-empt use of that abstract concept”.  The Judge goes a little further than that and describes the fundamental concept of upselling as “a marketing technique as old as the field itself”. 

At the EPO, the Board of Appeal dealt with this point very briefly noting that “the method primarily seeks to maximise an economic profit from a primary transaction with a customer by concurrently offering him a secondary transaction (‘upsell’)”. 

Something More v. Invention in the Implementation

In the Delaware Court Opinion, having determined that the invention relates to an abstract concept, the discussion turns to whether the claims include an inventive concept that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself”.  This is the second part of the Mayo[4] test which Alice decided applied to all forms of abstract concept, not just scientific theories or discoveries.  The patent proprietor sought to argue that various features of claim 1 sufficiently and significantly narrow the scope of the claim beyond that of the abstract concept itself.  Emphasised features included that the transaction is carried out in real time over an electronic communication device and the use of novel combinations of data, specifically the “identity of the good or service of the primary transaction and a second data element [relating to the user]”.  The Judge however held that none of these limitations are “meaningful” and their practical effect is insubstantial.  The Judge also considered that claim 1 lacked an inventive concept and rather required nothing more than a basic practice of upselling known in commerce “as long as markets have been in operation”. 

The fact that the upsell item is recommended in real time using a computer also did not save the claim because the computer was not “integral” and did not facilitate the process “in a way that a person making calculations or computations could not”.  The Judge acknowledges that a computer might be more efficient or faster in recommending an upsell than a human sales person but still it ‘performs nothing more than purely conventional steps that are well-understood, routine and previously known to the industry’. 

The decision of the Board of Appeal of the EPO concentrates on the technical aspects of claim 1.  These are again identified as including “real time access to databases while communicating with a person” but it is said that their use is “a common technical means for efficient interaction in situations where more and more activity, complexity and data volume are desired”.  The Board noted that no specific technical problem is addressed by the application; on the contrary the description repeatedly emphasises that the invention lies in functionality and implementation of that functionality using technical capabilities of existing communication systems is possible.  Thus the Board puts the applicant on the horns of a dilemma: if real time operation of a database is something special and involves an inventive step then the description must enable that but does not, if the real time operation of the database is within the routine capabilities of the person skilled in the art then it is not inventive.  Thus the Board cannot see any inventive technical contribution in the invention. 

A proffered limitation in the EPO proceedings to ensure that all features of claim 1 were restricted to computer-implemented steps faired no better.  The Board commented that “the overall functionality would still be commercial and its implementation would be a fully automated interactive network computer system whose (only) invention might reside in the cognitive meaning of data extracted from the system’s databases”.

The “novel combinations of data” that were emphasised in the US proceedings were not at all considered in the EPO proceedings.  This is because any novelty they may have lies in the meaning of the data and that meaning is not technical.


Thus we can see that both in the US and Europe the concept of upselling, and by extension other forms of commercial transaction, are seen as outside the scope of patent eligible subject either by being abstract or non-technical.  To be patentable, an invention has to have significantly more than such an underlying abstract concept.  In the US this must be more than just application on a computer and must be sufficient to provide an inventive concept.  In the EPO this means that the invention must have some inventive step in the practicable implementation of the abstract idea; e.g. in solving a technical problem. 

If the US requirement for an inventive concept requires only limitation to ensure that the entire abstract concept is not pre-empted, then it may be that this is a less difficult requirement to overcome than the EPO requirement for a technical inventive step.  On the other hand, if the requirement that the limitations must be “significant” and “meaningful” is taken to mean that the limitations must be technical in nature and significant, then perhaps the US test for patentable eligible subject matter approaches the practice of the EPO.  There are hints in the US Opinion that the Judge did not put much weight on limitations that effectively related to the type of transaction, i.e. remote, or based on different sales techniques, e.g. pushing goods in a non-targeted manner or based on loyalty card data.  Thus the Judge in the US seems to be effectively disregarding, or at least applying less weight to, non-technical features.

[1] 573 US                (2014)
[2] Civil action number 13-1771-RGA
[3] T588/05 of 23/9/09
[4] Mayo Collaborative Servs v. Prometheus Labs., Inc., 132 S.Ct. (2012)

15 December 2014

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