It is established case law of the boards of appeal that claimed subject-matter specifying at least one feature not falling within the ambit of Art. 52(2) EPC is not excluded from patentability by the provisions of Art. 52(2) and (3) EPC (G 3/08, OJ 2011, 10, T 258/03, T 424/03, T 1658/06, T 313/10).
According to T 258/03 (OJ 2004, 575) technical character results either from the physical features of an entity or (for a method) from the use of technical means. T 258/03 came to the conclusion that any claim involving technical means is not excluded from patentability by Art. 52(2) EPC, and since a claim directed to a method of operating a computer involved a computer it could not be excluded from patentability by Art. 52(2) EPC (see also G 3/08). The board noted that previous decisions of the boards of appeal had held that the use of technical means for carrying out a method for performing mental acts, partly or entirely without human intervention, might, having regard to Art. 52(3) EPC 1973, render such a method, a technical process or method and therefore an invention within the meaning of Art. 52(1) EPC 1973 (T 38/86, OJ 1990, 384, T 769/92). However, method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means could not contribute to the technical character of the subject-matter claimed.
The board found that the technical character is determined by the presence or use of technical means alone, irrespective of purpose, even if that purpose is purely non-technical. This finding was irrespective of whether or not it can be associated with a technical effect or serves a technical purpose or function.
The board stated that what mattered, having regard to the concept of "invention" within the meaning of Art. 52(1) EPC 1973, was the presence of technical character which could be inferred from the physical features of an entity or the nature of an activity, or could be conferred on a non-technical activity by the use of technical means. In particular, the board held that the latter could not be considered to be a non-invention "as such" within the meaning of Art. 52(2) and (3) EPC 1973. Hence, in the board's view, activities falling within the concept of a non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications. The board stated that its comparatively broad interpretation of the term "invention" in Art. 52(1) EPC 1973 would include activities which are so familiar that their technical character tends to be overlooked, such as the act of writing using pen and paper. However, this did not imply that all methods involving the use of technical means were patentable. They still have to be new, represent a non-obvious technical solution to a technical problem, and be susceptible of industrial application. The consequence was that, with regard to methods, T 931/95 (OJ 2001, 441) was explicitly overturned by T 258/03 (Headnote 1). In decision T 931/95 the board had stated that using technical means for a purely nontechnical purpose and/or for processing purely non-technical information did not necessarily confer technical character on any such individual steps of use or on the method as a whole. The mere occurrence of technical features in a claim did not turn the subject-matter of the claim into an invention within the meaning of Art. 52(1) EPC 1973.
In T 38/86 (OJ 1990, 384) the board stated that the use of technical means for carrying out a method, partly or entirely without human intervention, which, if performed by a human being, would require him to perform mental acts, might, having regard to Art. 52(3) EPC 1973, render such a method a technical process or method and thus an invention within the meaning of Art. 52(1) EPC 1973.
In T 1749/06 the board noted the difficulty of assessing whether or not a feature contributed to the technical character of a claim. It agreed, however, with the approach followed in decision T 258/03 (OJ 2004, 575) according to which even such a familiar activity as the act of writing using pen and paper has technical character. The board stated that inventions such as the cinematograph were based on an effect which only "happens in the brain of the viewer", namely that the projection of a rapid succession of still images on a screen creates the illusion of fluent motion. Although the illusion of perceiving a real action was only created in the viewer's brain, nobody would seriously contest that the cinematograph was an invention based on technical features. It could be argued that the apparatus of the cinematograph comprised technical elements with the ultimate purpose of creating the illusion of motion in the viewer's brain. However, in the case at issue the dark and light stripes were also technical elements which contributed to creating the three-dimensional illusion. For these reasons, the board considered that the features in question had technical character and were to be considered when assessing inventive step.