9.2.2 Excluded subject-matter

It is the established case law of the boards of appeal (see G 3/08 date: 2010-05-12, OJ 2011, 10; T 258/03, and T 424/03, T 313/10) 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. 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 (point 4 et seq. of the Reasons) (see also T 1784/06).

The presence of an inventive step can 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 (T 641/00, OJ 2003, 352) (see also T 619/02, OJ 2007, 63).

In T 531/03 the board stated that an attempt to take into account the contribution of non-technical and technical aspects on an equal footing in the assessment of inventive step would not be in conformity with the EPC, since the presence of inventive step would in such an approach be attributed to features which are defined in the EPC as not being an invention.

In T 1543/06 the board stated that the principle as expressed in T 641/00 (OJ 2003, 352) could be also reformulated as follows: an invention which as a whole falls outside the exclusion zone of Art. 52(2) EPC 1973 (i.e. is technical in character) cannot rely on excluded subject-matter alone, even if novel and non-obvious (in the colloquial sense of the word), for it to be considered to meet the requirement of inventive step (see also T 336/07).

The presence of an inventive step cannot rely on excluded (non-technical) subject-matter alone, however original it may be (see also T 336/07).