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Mixed inventions are inventions having both technical and non-technical features, where "non-technical" relates to matter which, under Art. 52(2) EPC, is not to be regarded as an invention within the meaning of Art. 52(1) EPC (T 1543/06).
In T 154/04 (OJ 2008, 46) the board stated that in examining the patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention. It is legitimate to have a mix of technical and "non-technical" features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject-matter of the claim, solve a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step (see also T 641/00, OJ 2003, 352, T 1505/05). A summary of the methodology applied by the boards of appeal can be found in T 1543/06.
In T 258/03 (OJ 2004, 575) the board noted that taking into account both the fact that a mix of technical and non-technical features may be regarded as an invention within the meaning of Art. 52(1) EPC 1973, and the fact that prior art should not be considered when deciding whether claimed subject-matter is such an invention, a compelling reason for not refusing subject-matter consisting of technical and non-technical features under Art. 52(2) EPC 1973 is simply that the technical features may in themselves turn out to fulfil all the requirements of Art. 52(1) EPC 1973 . Moreover, it is often difficult to separate a claim into technical and non-technical features, and an invention may have technical aspects which are hidden in a largely non-technical context. Such technical aspects may be easier to identify within the framework of the examination as to inventive step, which, in accordance with the jurisprudence of the boards of appeal, is concerned with the technical aspects of an invention. Thus, in addition to the restrictive wording of Art. 52(3) EPC 1973 limiting the applicability of Art. 52(2) EPC 1973, there may be practical reasons for generally regarding mixes of technical and non-technical features as inventions within the meaning of Art. 52(1) EPC 1973.
In G 1/04 (OJ 2006, 334) the Enlarged Board referred to T 603/89 (OJ 1992, 230) and found that the subject-matter of a claim including technical and non-technical features may satisfy the requirements of Art. 52(1) EPC 1973 if the non-technical features interact with the technical features in order to bring about a technical effect. It stated that, since the diagnostic methods referred to in Art. 52(4) EPC 1973 were inventions within the meaning of Art. 52(1) EPC 1973, it followed that, in a situation where the deductive medical or veterinary decision phase was a purely intellectual exercise, i.e. a step of a non-technical nature, such a method must necessarily further include preceding steps of a technical nature, in order to satisfy the requirements of Art. 52(1) EPC 1973.
In T 820/92 (OJ 1995, 113) the board noted that, whilst Art. 52(2) EPC 1973 provided that certain activities of an abstract and intellectual character could not be regarded as inventions, Art. 52(3) EPC 1973 provided that this exclusion should apply only to the activities as such. This had been interpreted as meaning only that a claim directed to such activities per se was not allowable, but that a claim was allowable where the interaction of such an activity with something else could be regarded as an invention. This contrasted with the position under Art. 52(4) EPC 1973, which prevented the methods specified from being patented, even though they might otherwise be considered as an invention susceptible of industrial application as required by Art. 52(1) EPC 1973. The board pointed out that no provision similar to Art. 52(3) EPC 1973 limited the exclusion of Art. 52(4) EPC 1973 (see also T 82/93, OJ 1996, 274).
In T 1054/96 (OJ 1998, 511) the board considered that the different wording used in Art. 53(b) EPC 1973 and in Art. 52(2) EPC 1973, and the fact that these exceptions from patentability were in different Articles was intended to emphasise that there was a difference in legal category between the Art. 52(2) EPC 1973 exceptions relating to matter which as such was not regarded as an invention, and the Art. 53(b) EPC 1973 exceptions for which patents were not to be granted, even though they could be regarded as inventions.