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Case Law of the Boards of Appeal

 
 
b)
The "Comvik approach" 

The cornerstone of the assessment of inventive step by the EPO is the problem-solution approach, which is fundamentally technical in nature. Such an approach must necessarily differentiate between technical and non-technical features when applied to "mixed" or hybrid inventions. In the approach adopted by T 641/00 (the Comvik approach), an "invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step" (see for example 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, one 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. 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 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 528/07 the invention, a computer system, consisted of a mixture of technical and non-technical features. The board stated that in order to examine this type of subject-matter the board would normally apply the "Comvik approach" (see T 641/00). The appellant had however argued that since Art. 52(1) EPC had been brought into line with Art. 27(1) TRIPs, it had to be interpreted in the light of the object and purpose of TRIPs and that would require a modification of the Comvik approach. The board held that under Art. 27(1) TRIPs a patent shall only be granted if it is new and involves an inventive step. TRIPs however does not stipulate how these requirements are to be applied. The TRIPs member states are free to adopt different standards for each patentability requirement, such as inventive step. The Comvik approach is one facet of the standard applied by the EPO.