9.2.6 Aim to be achieved in a non-technical field included in the formulation of the technical problem

In T 641/00 (OJ 2003, 352) the board considered the formulation of the technical problem in the case of mixed-type inventions. 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. Thus, the board allowed an aim to be achieved in a non-technical field to appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that is to be met (see e.g. T 2063/09).

In T 154/04 (OJ 2008, 46) the board noted as follows: For the purpose of the problem-solution approach, the problem must be a technical one which the skilled person in the particular technical field might be asked to solve at the priority date. (as similarly held in T 641/00). The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim to be achieved stems from an a posteriori knowledge of the invention (as similarly held in T 641/00)). The definition of the technical problem is difficult if the actual novel and creative concept making up the core of the claimed invention resides in the realm outside any technological field, as is frequently the case with computer-implemented inventions. Defining the problem without referring to this non-technical part of the invention, if at all possible, would generally result either in an unintelligible vestigial definition, or in a contrived statement that does not adequately reflect the real technical contribution provided to the prior art.

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 (see e.g. T 958/03 and T 506/06).

In T 144/11 the board stated that what the board had held in T 1463/11 demonstrated that a careful analysis of which parts of a claimed feature involve a business requirement could help to resolve the grey area between technical and non-technical features. A corollary of this approach, and what is seen in practice, is that a problem of the type "implement the business requirement" will normally never lead to an allowable claim. Either the implementation will be obvious or have no technical effect, or if not, the implementation will have a technical effect that can be used to reformulate the problem essentially to "achieve the effect of the implementation". However, the implementation-type problem is just a starting point that might have to be modified when the implementation is considered. It helps when a technical problem is not apparent at the outset. Examining the business requirements like that and correctly establishing what is to be implemented ensures that all technical matter arising from the idea of the invention and its implementation is taken into account for inventive step.

In T 232/14 the board followed T 144/11 and held that using ranges of unit identifiers to label a number of (consecutive) unit identifiers of manufactured items was, at the level of generality at which it was claimed, on the business side of the line between technical and non-technical subject-matter. The ranges of unit identifiers did have a meaning for the business person. They corresponded to batches of units produced on a production line. Even if the "determining of ranges of unit identifiers" achieved a technical effect, such as reducing data storage and data bandwidth requirements, it was a matter of routine design for the skilled person, a software programmer or a database expert, based on common general knowledge to store the first and the last element of a list of items, instead of the whole list.

In T 2052/12 the invention dealt with parking meters that could credit money on smart cards, but also stored a repayment limit on the smart card to prevent theft. The board held that the claimed method involved technical features carried out by the data carrier, in particular the storing, setting and reducing of the repayment limit, the checking of the reimbursement value and its contingent addition to the memory value, and the checking of key information identifying the communication facility's credit authorization. It held that these technical features brought about technical effects beyond the mere implementation of the claimed method in such a way as to achieve the aims corresponding to the non-technical features.

In T 581/14 the board took the view that a reduction in complexity of calculation could be a technical aim.

In T 2314/16 the invention concerned the distribution of rewards to participants in an affiliate marketing scheme, by which an influencer (called user in claim 1) received a reward for advertising a product or service on a blog or on social media. Participating influencers were each allocated a portion of an advertisement banner displayed on a web site. The visitors to the website did not see the user areas, only an advertising banner. When the visitor clicked on the banner, the user whose portion was clicked on got a reward, distributed according to the sizes of the image portions. The partial areas were allocated such that the reward distribution rates matched the degree of contribution of each user to the advertising. The board held that the specification of the business method ended with how to determine the reward distribution ratio. The features of dividing the advertisement display area into partial areas and allocating each partial area to a user such that when the partial area was clicked on the user got a reward, were based on technical considerations of the web page system. It was not motivated by any business considerations. In order to come up with this idea, one needed to understand how a web site is built, and in particular how an image map works. Thus, this feature could not be part of the non-technical requirements. Instead it was part of the solution that had to be evaluated for obviousness.

In T 550/14 the board declined to define criteria that the examining division should use to prove that a feature is not technical, in keeping with previous case law. However, as stated in T 2314/16, over the years the case law has provided guidance on the issue of technicality, most recently the framework for discussion given in T 1463/11 to help classify whether borderline features of a claim are on the technical or the non-technical side. The board gave one piece of advice for examining divisions: where possible to search for and start from a document that already discloses some of the alleged non-technical features, thus avoiding the discussion for these features (see e.g. T 756/06 or T 368/05).