The allowability of software patents in Europe regularly hinges on the requirement of an inventive step. This is because under the EPC, inventive step can only be established by those invention features which provide a technical difference over the prior art — while purely non-technical features are disregarded:
Decision T 0641/00 (Two identities/COMVIK) of September 26, 2002 is probably the most important decision underlying the current legal framework for assessing the patentability of software-related inventions in Europe. The essence of the decision is:
It is ok to have a claim with a mix of technical and non-technical features, however, inventive step can only be based on the technical features of the invention.
I. An invention consisting of a mixture of technical and non- technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.
II. 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 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.
From the reasons
2. Article 56 EPC states in its English text that an invention shall be considered to involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. The equally authentic French and German texts are somewhat more informative in that they can best be rendered in English as stating that an invention shall be considered as based on inventive activity if a skilled person cannot derive it in an obvious manner from the state of technology.
3. The legal definition of Article 56 EPC is to be put into context with the remaining patentability requirements of Articles 52 to 57 EPC, these articles implying the general principles that patents shall be available for inventions in all fields of technology (see, for example, Singer/Stauder: “Europäisches Patentübereinkommen”, Article 52, paragraph 2, with further citations), and that technical character is a sine qua non for an invention in the sense of the EPC (see, for example, decision T 931/95 Controlling Pension Benefits System/PBS PARTNERSHIP (OJ EPO 2001, 441)).
4. On this approach it is legitimate to have a mix of technical and “non-technical” features (i.e. features relating to non- inventions within the meaning of Article 52(2) EPC) appearing in a claim, even if the non-technical features should form a dominating part. Thus in T 26/86 X-ray apparatus/KOCH& STERZEL, (OJ EPO 1988, 19) a mix of technical and non-technical features was considered as a matter of principle to be patentable even if the technical was not the dominating part of the invention. As reasoned by the Board, “the teaching (might, otherwise, be made) unpatentable in its entirety if the greater part is non- technical and even though the technical aspect which is found to be subordinate is in fact judged to be novel and to involve inventive step” (see paragraph 3.4 of the decision). It follows that the Board, although allowing a mix of technical and non- technical features to be claimed, considered the technical part of the invention as the basis for assessing inventive step.
5. Furthermore, based on the ordinary meaning to be given the terms of Article 56 EPC in their context in the EPC, and consistent in particular with Rule 27 EPC, as a test for whether an invention meets the requirements of Article 56 EPC the Boards of appeal have developed and applied a method known as the “problem-and-solution approach” (see EPO publication “Case Law of the Boards of Appeal of the European Patent Office”, 4th edition, 2002, pages 101 ff) according to which an invention is to be understood as a solution to a technical problem. This approach requires identification of the technical field of the invention (which will also be the field of expertise of the person skilled in the art to be considered for the purpose of assessing inventive step), the identification of the closest prior art in this field, the identification of the technical problem which can be regarded as solved in relation to this closest prior art, and then an assessment of whether or not the technical feature(s) which alone or together form the solution claimed, could be derived as a whole by the skilled person in that field in an obvious manner from the state of the art.
For the purpose of the problem-and-solution approach, the problem 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 particular technical field might be asked to solve at the priority date. In this context “problem” is used merely to indicate that the skilled person is to be considered as faced with some task (German “Aufgabe”), not that its solution need necessarily involve any great difficulty.
6. Further, where 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.
Read the whole decision here: T 0641/00 (Two identities/COMVIK) of 26.9.2002