Treatment of non-technical features in the problem-solution approach at the EPO

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On Sept. 26, 2002 the European Patent Office's Technical Board of Appeal issued its decision in the case T 641/00 COMVIK. In this decision, the Board was again confronted with the question of inventive step regarding a mixture of technical and non-technical features. Having received some criticism regarding the approach taken earlier in T 931/95 Improved Pension Benefit System, the Board (in a different composition) now attempted to put the issue to rest once and for all.

When assessing the requirement of inventive step, the problem-solution approach is normally to be used. The technical problem should not contain pointers to the solution or partially anticipate it. In T 641/00 the Board observed that this principle applies only to those aspects of the claim which contribute to the technical character of the invention and hence which are part of the technical solution. In other words, since non-technical features cannot contribute to inventive step, it is permissible to make them part of the technical problem.

The problem-solution approach to patentability

To be patentable in Europe, an invention must have technical character. This technical character is to be derived from the claim as a whole. A claim has technical character even if all the features contributing to technical character are known. Furthermore, a claim consisting of a mixture of technical and non-technical features qualifies as an "invention" within the meaning of Article 52(1) EPC. This applies even if the non-technical features are in the majority (see T 26/86).

If an invention is found to have technical character, the next question is whether it is novel and whether it contains an inventive step.

The steps of the problem-solution approach

When assessing the requirement of inventive step, the problem-solution approach is generally to be used (see the Guidelines, C-IV 9.4). The problem-solution approach as developed by the Boards defines an invention to be a solution to a technical problem. This approach requires the following steps to be made:

Who is the skilled person?

An invention is a solution to a technical problem. If the solution to this problem is not obvious to a person skilled in the art, the invention involves an inventive step. It thus follows that the skilled person must be a person working in the technical field with which the technical problem is concerned. Thus, the skilled person is necessarily always an expert in a technical field. If the technical problem is concerned with a computer implementation of the business, actuarial or accountancy system, the skilled person is someone skilled in data processing, and not a businessman, actuary or accountant.

Formulating the technical problem

When applying the problem-solution approach, the problem to be solved must be a technical problem, it must actually be solved by the solution claimed, all the features in the claim should contribute to the solution, and the problem must be one that the skilled person in the identified technical field might be asked to solve at the priority date.

Multiple problems may exist

It may be the case that the claimed features fall into two or more groups, each group serving to solve different, unrelated technical problems. In such a case, the obviousness of each group as a solution to its problem needs to be considered in isolation (see for example T 470/95).

Features that do not contribute to the solution are irrelevant

Furthermore, if a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect, it has no significance for the purpose of assessing inventive step. For example, in T 158/97 a modification of a known device which was not related to any technical function was held incapable of contributing to inventive step. Also, in T 27/97 the Board ignored, in assessing inventive step, a feature distinguishing the claim from the prior art because this feature did not provide any established technical effect.

Non-technical features may appear in the technical problem

When formulating the technical problem, it is not permissible to refer to matters of which the skilled person would only have become aware by knowledge of the solution now claimed. A technical problem should not contain pointers to the solution or partially anticipate it. This would be impermissible hindsight.

In T 641/00 the Board observed that this principle applies only to those aspects of the claim which contribute to the technical character of the invention and hence are part of the technical solution. Merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular, where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately 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 has to be met.

This confirms decisions T 1053/98 in which the technical problem was formulated in such a way that there was no possibility of an inventive step being involved by purely non-technical features, and T 931/95 in which the Board assessed inventive step by assuming that the skilled person had knowledge of the non-technical features so that only the technical aspects of the claimed apparatus were taken into account.

Example: Shared identities in a mobile phone (T 641/00)

In T 641/00, two oppositions were filed against European patent 579 655 which relates to GSM mobile telephone systems and in particular to the use of a multiple-identity IC card as the Subscriber Identification Module (SIM) in such a telephone. Traditionally, a SIM only supports a single identity (subscriber) which makes it difficult, for example, to share one telephone amongst users or to use one telephone for both private and business calls with separate billing. According to the invention the SIM has at least two identities allocated, one of which the user can activate to make a call and have it billed against the selected identity.

A careful analysis of the closest prior art showed that all features of the claims were known except for the fact that

  1. the SIM is allocated at least two identities,
  2. said at least two identities being selectively usable, and
  3. the selective activation is used for distributing the cost for service and private calls or among different users.

The closest prior art disclosed that a SIM can be allocated plural identities, but did not explicitly mention that the plural identities can both be used for GSM telephony.

Nothing in the patent provided any technical effect or technical considerations regarding features 2 and 3. How the selective activation was used is left up to the network operator. The previously mentioned problem that it was difficult to realize separate billing using a single phone and a single SIM is not a result of the technical features of the system, but is rather a financial and administrative problem. The question was now how to reformulate this problem as a technical problem, and in particular what should be done with the non-technical third feature.

Following the above reasoning, the technical problem was formulated as how to implement the GSM system in such a way as to allow user-selectable discrimination between calls for different purposes or by different users. In other words, despite being novel, the non-technical features have been made part of the technical problem. The skilled person, being an expert in GSM systems, would derive the technical features in an obvious manner from the closest prior art when setting out to solve this technical problem, because in this particular case there were some clear hints in the prior art on how to modify a GSM system to provide at least two selectively usable identities. As a result, the claim was rejected for lack of inventive step.