Non-technical features and technical contribution 

Art. 56 EPC requires a non-obvious technical contribution.

In T 1784/06 the board confirmed the Comvik approach that only features contributing to the technical character of claimed subject-matter enter into the examination for inventive step (T 641/00, OJ 2003, 352; T 1834/10). As patents can be granted only for technical subject-matter, the consequence is that a (non-obvious) contribution which justifies the grant of a patent has to have a technical character. It would appear paradoxical to recognise an inventive step on the basis of a non-technical innovation (such as an organisational, administrative, commercial or mathematical algorithm) having no technical implication other than the (obvious) desire for its implementation on a general-purpose computer. Where an intrinsically non-technical solution (here: a mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. Otherwise, the solution remains non-technical and does not enter into the examination for an inventive step (T 566/11). The board agreed with the statement that a non-technical problem can have a technical solution. However, where an intrinsically non-technical solution (mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. According to the appellant, claimed subject-matter as a whole should be examined for the presence of an inventive step once the subject-matter as a whole has been found to meet the technology criterion of Art. 52(1), (2) and (3) EPC. The appellant argued that Art. 56 EPC 1973 should be applied independently of Art. 52(1), (2) and (3) EPC because Art. 52(2) EPC has to be applied independently of Art. 56 EPC. The board pointed out that Art. 52(1) EPC has always been understood as referring to technical inventions. It also noted that Opinion G 3/08 (OJ 2011, 10) of the Enlarged Board of Appeal backed the Comvik approach rather than raising any objection to it (points 10.13.1 and 10.13.2 of the Reasons).

In T 336/14 the question which arose first was whether the distinguishing features of constituted presentations of information as such within the meaning of Art. 52(2)(d) and (3) EPC and thus were non-technical features which do not contribute to the technical character of claim 1. The board was aware of decisions proposing the concept of "technical novelty" (see G 2/88, OJ 1990, 93; T 154/04, OJ 2008, 46; T 619/98). The board, however, followed the well-established approach of treating potentially non-technical features under the umbrella of inventive step (see e.g. T 641/00, OJ 2003, 352).

The board noted that features relating to subject-matter excluded under Art. 52(2) EPC may only contribute to an inventive step if they bring about an overall technical effect, i.e. if they contribute to the technical character of the claim by interacting with its technical features to solve a technical problem. Otherwise, they are to be disregarded in the assessment of inventiveness (see e.g. T 641/00, T 154/04, T 1143/06). This is, in principle, also applied in prominent national decisions of the German Federal Court of Justice (BGH) concerned with the matter of "presentations of information" (see e.g. BGH, X ZR 3/12, GRUR 2013, 275 – Routenplanung; BGH, X ZR 27/12, GRUR 2013, 909 – Fahrzeugnavigationssystem) and the Court of Appeal of England and Wales dealing with "programs for computers" (see Court of Appeal decision of 8 October 2008 – Symbian Ltd v. Comptroller General of Patents [2008] EWCA Civ 1066). The board stated that, in the assessment of whether a feature provides a technical contribution, the feature is not to be taken by itself, but its technical character is to be decided by the effect it brings about after being added to an object which did not comprise that feature before (T 119/88, OJ 1990, 395, point 4.1 of the Reasons). Therefore, the board had to determine whether the distinguishing features of claim bring about a credible technical effect and hence solve a technical problem.

In T 1121/02 the board referred to T 931/95 (OJ 2001, 441) and T 641/00 (OJ 2003, 352) and confirmed that features making no contribution to technical character could not support the presence of an inventive step. In T 258/03 (OJ 2004, 575), the board held that the invention was to be assessed by taking account only of those features which contributed to a technical character (see eg. T 784/06, T 2050/07). The features that made a technical contribution therefore needed to be determined.

In T 1145/10 the board stated that where specific technical features or functionality of the standard computerised system are required to implement the non-technical features, those specific well-known technical features and functionality should be clearly identified.

The closest prior art is usually chosen on the basis of the technical problem to be solved and/or the technical features of the invention. The closest prior art, which is part of the state of the art, does not normally have to include non-technical features of the claim (see T 1379/11). On the other hand, features which would, when taken in isolation, be considered non-technical may nonetheless impose technical requirements or contribute to the technical character of the invention (see e.g. G 3/08, OJ 2011, 10, point 12.2.2 of the Reasons; T 1145/10). Such features should be taken into account when choosing a starting point for assessing inventive step (see also T 1930/13). The non-technical purpose of an invention may determine the technical environment needed (see T 1145/10).

In T 483/11 the board held that a feature does not automatically inherit the technical character of the context in which it occurs. The feature must, itself, make a contribution to the technical context or the technical aspects of the invention (see also T 1722/12).

In T 2488/11 the board held that logging or documenting the execution details of tests carried out in a laboratory, irrespective of the technicality of the tests themselves was not technical. The board also held that the mere automation of a non-technical task by means of notorious technical means cannot involve an inventive step.

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