European software patents are granted by the EPO for inventions which are novel and involve an inventive step. In the COMVIK decision it was held that inventive step can only be based on technical features, but not on non-technical features. But what about the preceding hurdle of novelty? Is an invention novel if it differs from the prior art only by means of non-technical features?
The technical board of appeal 3.3.08 of the EPO had to deal with this question in decision T 2050/07 (DNA Mixture Analysis/PERLIN) of February 19, 2013. Unfortunately, the question whether a non-technical feature can establish novelty was left unanswered, since the feature in question was eventually considered technical:
From the reasons
3. It is established case law that claimed subject-matter is not excluded from patentability as a non-invention under Article 52(2) EPC for the sole reason that it contains features which might be considered to be non-technical (see opinion G 3/08, OJ EPO 2011, 10, point 10.13 of the Reasons, and decision T 1658/06 of 14 January 2011, point 3 of the Reasons). In the present case, claim 1 as well as dependent claims 2 to 21 are directed to a method of analysing a DNA sample. This method comprises inter alia a step of amplifying the DNA sample, wherein the amplification product produces a signal comprising signal peaks (see step (a)), a step of detecting signal peak amounts and a step of quantifying the amounts using quantifying means that include a computing device to produce DNA length and concentration estimates (see step (b)). Already for the reason that both steps (a) and (b) are obviously performed using dedicated laboratory equipment and devices the claimed method cannot be considered as being devoid of technical character. The Board therefore reaches the conclusion that the subject-matter of none of the claims of the request is to be regarded as a non-invention pursuant to Article 52(2) EPC.
8. Both the method according to claim 1 and the method of document D6 involve (i) an amplification step wherein as a result of the DNA amplification a signal is produced which comprises signal peaks, (ii) a step of detecting the peak amounts in the signal, (iii) a step of quantifying the amounts to produce DNA length and concentration estimates, and (iv) a resolution step which involves a mathematical method basically consisting in representing the estimates in a linear equation, deriving a solution from the linear equation, and resolving the DNA mixture into its components. The methods differ essentially in that in the method according to claim 1, (i) the linear matrix equation ‘p = G x w’ used in document D6 […] has been amended to include an error vector which models measurement error (see paragraph  of the published patent application) and reads ‘d = G.w + e’, and (ii) the solution includes calculation of data variance sigma**(2) from the linear model ‘d = G.w + e’ together with the global minimal solution ‘Pd = Gw0′.
9. The argument could be made that the distinguishing features described above are of non-technical nature as being a mathematical method or a method for performing mental activities, and that, in view of the established case law according to which features that do not contribute to the technical character of an invention and do not interact with the technical subject-matter of the claim for solving a technical problem, have to be ignored when assessing inventive step, such features should equally be ignored when assessing novelty. The Board therefore examines whether or not the distinguishing features in the present case make a technical contribution.
10. Both the distinguishing features (i) and (ii) aim at ascertaining the reliability of the claimed method for analyzing DNA samples containing genetic material from two or more individuals and for determining the genotypes involved. By providing estimates of the error ‘e’, estimates of the variances and standard deviations can be computed from the data using the global minimal solution ‘Pd = Gw0′ and these values can be used to estimate probabilities. This results in a quantitative estimate of the quality of the solution (see paragraphs  and  of the published application). Thus, the distinguishing features constitute a means for improving the confidence of the genotype estimate of the quantitative method analysis of document D6 (see paragraphs  and  of the published application). The board therefore considers that the distinguishing features contribute to the technical character of the claimed invention.
13. The above consideration leads the Board to consider that the distinguishing features have to be taken into account when assessing novelty of claim 1 and, therefore, it concludes that the method of claim 1 is new. As claims 2 to 21 are dependent on claim 1, the request as a whole complies with the requirements of Article 54 EPC.
Read the whole decision here.
The bottom line
The EPO case law leaves open whether a non-technical feature can be used to distinguish an invention from the prior art (i.e. to make the invention novel). However, this question is hardly relevant in practice, since non-technical features in any case fail to provide an inventive step under the European approach.
Originally published at www.europeansoftwarepatents.com on February 16, 2015.