For the purpose of the problem-and-solution approach developed as a test for whether an invention meets the requirement of inventive step, the problem must be a technical one (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 (T 154/04, OJ 2008, 46).
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 (see point 7 to the Reasons). 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). Such a formulation had the additional, desirable effect that the non-technical aspects of the claimed invention, which generally relate to non-patentable desiderata, ideas, and concepts and belong to the phase preceding any invention, are automatically cut out of the assessment of inventive step and cannot be mistaken for technical features positively contributing to inventive step. Since only technical features and aspects of the claimed invention should be taken into account in assessing inventive step, i.e. the innovation must be on the technical side, not in a non-patentable field (see also decisions T 531/03 and T 619/02), it was irrelevant whether such a non-technical aim was known before the priority date of the application, or not (see T 154/04). 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).
The board noted that this approach, although not made explicit before the Comvik decision T 641/00, was in line with the case law of the boards of appeal as shown, for example, from the analysis of some earlier decisions in decision T 764/02. In T 1769/10 the board stated that the case law, as summarised in T 154/04, had created a practicable system for delimiting the innovations for which a patent may be granted (G 3/08 date: 2010-05-12, OJ 2011, 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 (see e.g. T 958/03 and T 506/06).
In T 1463/11 the board noted that if the essential idea of the invention lies in a non-technical field (usually one excluded by Art. 52(2) EPC, such as business, programs, or presentations of information), the objective technical problem often amounts to a statement of requirements that any implementation must meet. The assessment of what is and what is not technical is, therefore, a critical step in the formulation of the objective technical problem. A non-obvious difference over the prior art leads to a positive outcome, if it is deemed technical; but a non-obvious difference that is deemed non-technical leads to a negative outcome. This often leads to opposing definitions of the problem and must therefore be analysed precisely. The formulation of the objective technical problem in terms of non-technical requirements raises the question of what requirements the business person (for example) can actually give to the technically skilled person. Naturally, any requirement that is purely a business matter can be included. However, in the assessment of inventive step, the business person is just as fictional as the skilled person of Art. 56 EPC. The notion of the skilled person is an artificial one; that is the price paid for an objective assessment. So it is too with the business person, who represents an abstraction or shorthand for a separation of business considerations from technical. A real business person, a real technically-skilled person, or a real inventor does not hold such considerations separately from one another.
In T 630/11 the invention provided a "gaming server" with which various online casinos communicate, with the aim of reducing waiting time for players. The issue was how the non-technical aim of reducing waiting time was translated to a (technical) invention and whether there came a point at which technological issues so predominate that further non-technical considerations are no longer separable from them.
The board noted that T 1463/11 warned against allowing the notional business person to require technical means and thus to take technical decisions.
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 the Board's view, another constraint is that the technical skilled person must receive a complete description of the business requirement, or else he would not be able to implement it and should not be providing any input in the non-technical domain.
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.