Present practice: Inventive step approach
Since T 931/95 - Controlling pension benefits system/PBS PARTNERSHIP the contribution approach is no longer applied. Instead, the majority of the discussion in “borderline” cases takes places during the inventive step assessment. Therefore, this practice will be referred to as the inventive step approach1 in this website.
Determination of the presence of technical character
The first assessment being made is whether there is any technical character within the claim. There is no direct provision that requires an invention to have technical character. Some provisions indirectly refer to the technical character of patentable subject matter:
- Rule 42(1)(a) EPC:
The description shall: specify the technical field to which the invention relates;
- Rule 42(1)© EPC
disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art;
- Rule 43(1) EPC:
The claims shall define the matter for which protection is sought in terms of the technical features of the invention.
In other words, an invention is supposed to relate to a technical field, to a technical problem, and the invention should comprise technical features.
There is a general consensus that patent protection is only available for technical subject matter. The discussion concentrates more on what is considered technical and what is not.
As long as no technical feature can be distinguished in the claim, the claim will be rejected as non patentable. Usually this will be a rejection under Article 52 EPC, as the content of the claim is considered to be one of the excluded categories.
It should be noted that if the claim can be implemented by technical means, for example a computer, but the claim language does not require this, the claim is considered to be non-technical. This sometimes happens with claims for business methods. The fact that the invention could be implemented by means of a computer, does not result in a technical term. The opposite however, holds too. As soon as a technical feature is comprised in the claim, and therefore required to be present, the claim is considered to have technical character. If all of the technical features mentioned in the claim belong to one of the exclusion categories of Article 52 EPC though, the claim is considered to be non-technical, as the features themselves are actually considered to be non-technical.
Simply stating in a claim the presence of a computer, or stating that it concerns a software program, makes the claim as a whole technical, and the claim will therefore pass this first test.
Novelty
After it has been established that the claim comprises at least one technical feature (that is not excluded by Article 52 EPC), it is determined whether the claim is novel over the prior art. In the novelty assessment it is customary to include all features of the claim, including the non-technical features. This means that a non-technical feature can render a claim novel. It should be noted though, that some case law mentions that only technical features can render a claim novel. One notable example of such case law is T 154/04 - Estimating sales activity/DUNS LICENSING ASSOCIATES.
Inventive step
After the novelty of the claim has been established, it is assessed whether the claim involves an inventive step. For this assessment the problem and solution approach is applied. It is actually at this step that a lot of the software related patent applications fail.
Technical character of distinguishing feature
In accordance with the problem and solution approach, after the closest prior art has been established, the distinguishing feature(s) between the closest prior art and the claim are determined. Once the distinguishing feature has been established, an assessment is made whether this feature actually has technical character. In assessing the technical character of the feature, the list of exclusions of Article 52(2) and (3) EPC is used again. All features that fail to have technical character are not taken into account during the inventive step assessment. This means that if all distinguishing features fail to have technical character, it is assumed in the remainder of the inventive step assessment as if there is no distinguishing feature, automatically leading to a lack of inventive step, as there is apparently no technical problem solved.
If there are distinguishing features remaining that appear to have technical character, the problem-and-solution approach continues with these technical features. The effect of these features is determined and an objective technical problem is formulated based on these features. Finally, it is examined if the person skilled, starting from the closest prior art, would solve the objective technical problem found.
Example
An example of a type of application that is rejected on a regular basis, is the automation of a further known administrative procedure. In these type of applications, the assessment of technicallity is not done before the inventive step assessment is started. The novelty of these type of claims is usually not specifically a problem, as non-technical features are (usually) taken into account during novelty assessment. If an automated version of the known administrative procedure is not well known, the novelty test if often passed without substantial problems. However, during inventive step assessment, the non-technical features are stripped from the claim. This usually leaves only a simple general purpose computer, or network of general purpose computers without any further features, as the steps from the administrative procedure are not regarded. The consequence is that any publication showing a general purpose computer or network of general purpose computers anticipates the claimed subject matter, and the application is rejected.
- 1. There is no consistent name for the current practice of the EPO in literature.