The President of the EPO referred the following point of law to the Enlarged Board of Appeal (G 3/08, OJ 2011, 10; Question 3(a) of the referral): must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim? It was noted in the referral that according to decisions T 163/85 and T 190/94, a technical effect on a physical entity in the real world was required. This was, however, not the case in T 125/01 and T 424/03. In these decisions the technical effects were essentially confined to the respective computer programs.
The Enlarged Board of Appeal stated in Opinion G 3/08 (OJ 2011, 10) that the case law of the boards of appeal as a whole is consistent in considering all the features that are claimed. The boards have always avoided approaches which involve weighting of features or a decision which features define the "essence" of the invention. It is true that the COMVIK/Hitachi (T 641/00, T 258/03) approach to deciding whether there is an inventive step may involve ignoring some features, but the method starts with a consideration of all the features together to determine whether the claimed subject-matter has a technical character. Only once this determination has been made can the board turn to the question of which claimed features contribute to that technical character and therefore should be taken into account for the assessment of whether there is an inventive step (see also T 528/07).
The Enlarged Board of Appeal went on and stated that it is in fact a well-established principle that features which would, taken in isolation, belong to the matters excluded from patentability by Art. 52(2) EPC may nonetheless contribute to the technical character of a claimed invention, and therefore cannot be discarded in the consideration of the inventive step. This principle was already laid down, albeit in the context of the so-called "contribution approach", in one of the earliest decisions of the boards of appeal to deal with Art. 52(2) EPC, namely T 208/84.
The second problem with the alleged divergence was that the decisions T 163/85 and T 190/94, said in the referral to require a technical effect on a physical entity in the real world, simply did not do so. They merely accepted this as something sufficient for avoiding exclusion from patentability; they did not state that it was necessary. The referral did not identify any passages requiring such an effect and the Enlarged Board could not find any. Thus there was no divergence. The other two decisions cited considered that there were technical effects; whether the boards concerned considered that these technical effects were on a physical entity in the real world was irrelevant. This question was therefore found inadmissible.