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Case Law of the Boards of Appeal

9.1.3 Identifying technical features

Unless stated otherwise, the case law referred to in the following chapters in respect of inventions consisting of a mixture of technical and non-technical features has been developed by the Technical Board of Appeal 3.5.01.

In T 931/95 (OJ 2001, 441) the first auxiliary request sought protection for an apparatus for controlling a pension benefits program and system. The board arrived at the conclusion that the improvement envisaged by the invention according to the application was an essentially economic one, i.e. lay in the field of economy, which therefore could not contribute to inventive step. The regime of patentable subject-matter was only entered with programming of a computer system for carrying out the invention. The assessment of inventive step had thus to be carried out from the point of view of a software developer or application programmer, as the appropriate person skilled in the art, having the knowledge of the concept and structure of the improved pension benefits system and of the underlying schemes of information processing. Taking into account the fact that the technical features of the apparatus claimed were functionally defined by precisely those information-processing steps, which formed part of the knowledge of the skilled person, as well as the fact that the application of computer systems in the economic sector was already a general phenomenon at the priority date (filing date) of the application, it had to be concluded that the claimed subject-matter did not involve an inventive step.

In the crucial decision T 641/00 (OJ 2003, 352) the patent in suit related to a method in a digital mobile telephone system of the GSM type in which a subscriber identity module (SIM card) was allocated at least two identities which were selectively activated by the user in order to distribute the costs between private and service calls. The board held that an invention consisting of a mixture of technical and non-technical features and having technical character as a whole was to be assessed with respect to the requirement of inventive step by only taking account of those features which contributed to that technical character. Features making no such contribution could not support the presence of inventive step. The board referred to T 158/97, where a modification of a known device not related to any technical function had been held incapable of contributing to inventive step (see also T 72/95, T 157/97 and T 176/97).

In T 27/97 the board, in assessing inventive step, had disregarded a feature distinguishing the claimed subject-matter from the prior art for lack of any established technical effect causally related to that feature.

In T 1001/02 the characterising feature principally involved a design element intended to harmonise and enhance the appearance of the whole radiator. Technical Board of Appeal 3.2.03 took the view that this feature could consequently not be regarded as a technical feature and therefore left it out of account in its assessment of inventive step.

In T 619/02 (OJ 2007, 63) the second auxiliary request defined a method of making a perfumed product comprising perfuming with an odour, the odour being selected following a procedure in which the (unperfumed) product itself or alternatively other desired attribute was used as target. Board of Appeal 3.4.02 stated that the claim was directed to the manufacture of a perfumed product and required imparting the selected odour to the product, and hence defined a process or activity that was technical by its very nature and pertained to the general technical field of perfumery. The board confirmed that the presence of an inventive step could only be established on the basis of the technical aspects of both the distinguishing features of, and the effects achieved by the claimed invention over the closest state of the art. The board stated that the claimed method differed from the closest state of the art in that the odour had been selected following a certain selection procedure. However, neither the selection procedure nor the resulting selected odour were of a technical nature. The board concluded that if, apart from a possibly commercially promising but purely aesthetic or emotional and therefore technically arbitrary effect, the distinguishing features of an invention over the closest state of the art do not, in the context of the claimed invention, perform any technical function or achieve any technical effect, no specific objective problem of a technical nature can be considered to be solved by the invention (see also T 1212/04).

In T 912/05 the application related to mail delivery systems which may deliver mail by physical and/or electronic means. The board found that it was not necessary to seek to separate features that were essentially business-related, and thus not relevant for the solution of a technical problem, from those features that, as essentially technical, should be taken into account when assessing inventive step. It concluded that the assessment of the inventive step of a business-related method might be possible without a preliminary clear-cut separation between business-related features and technical features.

In T 354/07 the application related to a process for producing software programs by means of a computer system. The board pointed out that software development and manufacture takes place in several stages from demand analysis through various design phases to production. All these stages essentially involve intellectual activity comparable to an engineer's design work, even if it is supported by programming tools and what is being designed is a technical system. While the design and programming of complex systems in particular require the active involvement of engineers and the application of technical knowledge, the eventual result to which each of these development phases is directly geared is not the technical solution of a technical problem but a requirements specification, a data, process and/or function model, or a program code. This assessment applies in particular to meta methods, which are concerned with the process of software production itself on an even more abstract level. For instance, they give the software developer instructions as to how the design process should be structured and organised or what modelling methods are to be used. These kinds of conceptual processes and meta methods for software production generally have no technical features relevant for patentability and thus cannot provide a basis for inventive step, unless, in an individual case, a direct causal connection can be proved with a technical effect which is relevant to the solution of a technical problem. No such technical effect could be ascertained in the case in question.