9.1.5 Formulation of the technical problem

In T 641/00 (OJ 2003, 352) the board considered the formulation of the technical problem. Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appeared in the claim did not mean it was automatically excluded from appearing in the formulation of the problem. In particular where the claim referred to an aim to be achieved in a non-technical field, this aim might legitimately appear in the formulation of the problem as part of the framework of the technical problem which was to be solved in order to avoid taking into account a non-technical contribution when assessing inventive step. The board referred to its decision T 1053/98, where it had considered it necessary to formulate the technical problem in such a way that "there was no possibility of an inventive step being involved by purely non-technical features". Such a formulation of the problem could refer to the non-technical aspect of the invention as a given framework within which the technical problem was posed. In the case at issue, the object of the invention as stated in the patent specification was to eliminate inconveniences caused by distributing costs for service and private calls or among different users. That object had to be reformulated to arrive at the technical problem of implementing the GSM system in such a way as to allow user-selectable discrimination between calls for different purposes or by different users (see also in this respect T 509/07).

According to the COMVIK approach (T 641/00) non-technical features may be taken into consideration when formulating the technical problem. In T 688/05 the board stated that in this way it is possible to assess whether a technical implementation requires inventive skill. The appellants submitted that this approach treats non-technical features as if they were known, although they may in fact be part of the inventor's contribution. In the board's view this is, however, the unavoidable consequence of the requirement in the EPC that the invention must relate to a technical problem. The board added that the concept of "novelty" in Art. 54(1) EPC 1973 was only defined for "inventions". It does not apply to the exceptions enumerated in Art. 52(2) EPC 1973. By analogy it could be held that claim features which do not contribute to the definition of an "invention" cannot be classified as new or not new within the meaning of Art. 54 EPC 1973. Nevertheless, they may well form the only logical link between technical features resulting from their implementation. They must therefore be taken into consideration for the examination as to inventive step, while at the same time not be permitted to contribute to it (see also T 619/02, OJ 2007, 63; T 1121/02, T 258/03, OJ 2004, 575; T 531/03).

T 154/04 (OJ 2008, 46) gives a summary of the case law developed as outlined above. In this connection, the Enlarged Board of Appeal noted in G 3/08 (OJ 2011, 10) that it was not aware of any divergence in this case law, suggesting that the boards were in general quite comfortable with it, and concluded that it would appear that the case law had created a practicable system for delimiting the innovations for which a patent may be granted (see also T 1769/10).

In T 336/07 Technical Board of Appeal 3.2.04 held that the mere fact that subject-matter (here rules for playing games) which was excluded per se under Art. 52(2)(c) EPC 1973 was technically implemented could not form the basis for inventive step. Inventive step could be based only on the particular manner of implementation of such subject matter. To this end it was therefore necessary to ask how the per se excluded subject matter was implemented. A consideration of the particular manner of implementation had to focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter (see also T 1543/06). The board concluded that the subject-matter of the claims did not involve an inventive step (on the technical implementation of game rules, see also T 1782/09 and T 1225/10). In these two decisions the board stated that "game rules" form part of "the regulatory framework agreed between [or with] players concerning conduct, conventions and conditions that are meaningful only in a gaming context. They govern the conduct and actions of the players during game play (T 336/07).

In T 1051/07 the application related to a transaction system for providing a financial transaction service to a subscriber. Board 3.4.03 held that insofar as administrative banking procedures indeed lacked technical character, the process claim was not confined to merely reciting an administrative banking procedure alongside straightforward technical means for its implementation, but rather provided a technical solution, involving technical means for the technical problem of how to reload such an account (see also T 1769/10).

In T 1284/04 the board held that the COMVIK approach does not consider the non-technical constraints as belonging to the prior art, but rather as belonging to the conception or motivation phase normally preceding an invention, since they may lead to a technical problem without contributing to its solution. Such aspects have never been taken into account in assessing inventive step, irrespective of whether or not they were known from the prior art.

In T 1177/97 the board held that information and methods relating to linguistics might in principle assume a technical character, if they were used in a computer system and formed part of a technical problem solution. Features or aspects of the claimed method which reflected only peculiarities of the field of linguistics, however, must be ignored in assessing inventive step. In the case in point, the technical differences which established the novelty of the claimed process were not inventive, since they originated from a non-technical constraint to the technical problem, the implementation of which was obvious.

In T 244/00 the appeal concerned a remote-control apparatus in the field of audio-visual systems. The invention was distinguished from the prior art system only in that at least four switches (of the cursor key) were operable in single or pair wise action in at least six directions and allowed direct cursor jumps along slanting lines in diagonal directions. The board stated that the graphic design of menus was, as a rule, not a technical aspect of a menu-driven control system. Nor was the practical use of such menus genuinely a problem with which the skilled person, in his function as a technical expert, was confronted. For the purpose of the problem and solution approach, the problem had to be a technical problem which the skilled person in the particular technical field might have been asked to solve at the priority date. The board therefore concluded that, in the case at issue, the technical problem had to be formulated in a more limited way than on the basis of the alleged advantages of moving a cursor diagonally over the TV screen. The actual technical problem resided in providing an appropriate cursor key enabling the user to move the cursor in six or more such directions.

In T 951/02 claim 1 of the application related to a combined games and gambling device. Technical Board of Appeal 3.4.03 held that, according to the statement of the problem in the application, the aim of the invention was to provide a games device offering a player particular inducements to play, thus preventing the player from starting to become bored. No objective technical problem was identifiable in this wording, however. To arrive at the objective technical problem, the aforementioned non-technical problem stated in the application had to be reformulated to indicate the aim of achieving enhanced flexibility in terms of the possible games systems of the known games device. The board held, however, that the replacement of one of the existing gambling systems in the device by a games system did not involve an inventive step, since a device for gambling possesses per se all the technical requirements for the operation of a game. The requisite modifications to the gambling device were therefore limited to the adaptation of the control program to the new games system. Such modifications to the control program of the device were within the scope of normal practice for an expert.

In T 318/03 the invention related to a method for allocating optimum operating parameters, in particular operating frequencies. The objective problem posed in the application was to indicate a method for allocating radio frequencies in a radio network having cells of differing sizes with a view to reducing the extent to which signals were subject to interference from other transmitters' signals. Technical Board of Appeal 3.5.03 established that this was a technical problem. The claimed method influenced the resulting physical radiation field and thus solved the problem by technical means.

In T 309/05 the board found it appropriate to adopt the approach in COMVIK (T 641/00, OJ 2003, 352). The board stated that the problem of automating the generation of Internet domain names, so that only names which are both available and desirable are presented to a potential buyer, must be stripped of aesthetic and semantic considerations, since these lie in a field excluded from patentability by the provisions of Art. 52(2)(b) and (c) EPC 1973. Reformulating the problem into non-technical and technical components left simply the concatenation of a text string provided by a user with a predetermined string as a technical problem.

In T 928/03 the application related to an interactive video game in which a user controls at least one player character displayed on a screen. The board stated that making a possibly concealed indicator clearly visible on a display screen to the user of an interactive video game does not exclusively address a human mental process but contributes an objective technical function to the display. The functional quality is not cancelled by the fact that the visualised information will also enter into a decision of the user interacting with the video game displayed on the screen. In applying the COMVIK approach in a fair manner, its purpose must be borne in mind: on the one hand, the approach is to make sure that non-technical aspects do not support a finding of inventiveness; on the other hand, actual contributions to the technical character by any feature of an invention must be taken into account when assessing inventive step. In this context, a game rule constraint has to be distinguished carefully from its technical implementation.

In T 958/03 the invention related to a method and apparatus for generating purchase incentives based on price differentials. In the board's judgment, the appellant's main contribution resided in a refined marketing scheme which based the coupon issuing process on commercial and/or psychological assumptions about consumer behaviour in the light of price differentials and brand loyalty. In the case at issue, the non-technical idea rather belonged to the non-patentable motivation phase preceding in principle any invention. It might therefore be included in the formulation of the technical problem and, thus, was disregarded in the assessment of inventive step.

In T 1244/07 the application concerned the "1-click" method of purchasing an item over the internet in a single action. The subject-matter of claim 1 differed from the closest prior art (article D1 "Implementing a Web Shopping Cart") in that the purchaser's identification information was not inputted when ordering the item, but looked up in the customer table using a client identifier received from the client and that the "single action" indication was only sent if it was "enabled". These features could be seen to solve the two above-mentioned problems in the application, namely to reduce the number of user interactions and also to reduce the amount of sensitive information sent over the internet. The board stated that in order to read sensitive data from the database, one would need a key that identified the purchaser in question. In its view it would be self-evident to use the user identifier or cookie already available in D1 to do this. The use of cookies to keep track of purchaser-specific data was known at the priority date. It also found that the step of enabling the "1­click" ordering function shifted the responsibility for security to the purchaser, who judged whether the single-action ordering should be enabled or not. Such a decision related to forms of human behaviour and thinking that fell under mental acts, which were excluded from patentability. According to the jurisprudence of the EPO these could not contribute to inventive step. Its implementation by means of a determination and a conditional sending step were clearly routine matters of design.

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