5.4 Claims comprising technical and non-technical features
Overview
5.4 Claims comprising technical and non-technical features
It is legitimate to have a mix of technical and non-technical features in a claim, as is often the case with computer-implemented inventions. The non-technical features may even form a major part of the claimed subject-matter. However, in the light of Art. 52(1), Art. 52(2) and Art. 52(3), a non-obvious technical solution to a technical problem is required for there to be an inventive step under Art. 56 (T 641/00, T 1784/06).
When assessing the inventive step of such a mixed-type invention, all features which contribute to the invention's technical character are taken into account. That includes features which are non-technical when taken in isolation but which, in the context of the invention, do contribute to producing a technical effect serving a technical purpose and so contribute to the invention's technical character. However, features which do not contribute to the invention's technical character cannot support an inventive step ("COMVIK approach", T 641/00, G 1/19). An example of such a feature is one that contributes only to solving a non-technical problem, e.g. a problem in a field excluded from patentability (see G‑II, 3 and subsections).
The problem-solution approach is applied to mixed-type inventions in such a way as to ensure that inventive step cannot be established on the basis of features not contributing to the invention's technical character but that all those features which do contribute to it are properly identified and taken into account in the assessment. To this end, 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 objective technical problem as part of the framework of the technical problem to be solved, in particular as a constraint that has to be met (T 641/00; see step (iii)(c) below and G‑VII, 5.4.1).
The steps below outline how the problem-solution approach is applied to mixed-type inventions following the COMVIK approach:
(i)The features which contribute to the technical character of the invention are determined on the basis of the technical effects achieved in the context of the invention (see G‑II, 3.1 to 3.7).
(ii)A suitable starting point in the prior art is selected as the closest prior art with a focus on the features contributing to the technical character of the invention identified in step (i) (see G‑VII, 5.1).
(iii)The differences from the closest prior art are identified. The technical effect or effects of these differences, in the context of the claim as a whole, are determined in order to identify from these differences the features which make a technical contribution and those which do not.
(a)If there are no differences (not even a non-technical difference), an objection under Art. 54 is raised.
(b)If the differences do not make any technical contribution, an objection under Art. 56 is raised on the ground that the subject-matter of a claim cannot be inventive if there is no technical contribution to the prior art.
(c)If the differences include features making a technical contribution, the following applies:
– The objective technical problem is formulated on the basis of the technical effects achieved by these features. In addition, if the differences include features making no technical contribution, these features, or any non-technical effect achieved by the invention, may be used in the formulation of the objective technical problem as part of what is "given" to the skilled person, in particular as a constraint that has to be met (see G‑VII, 5.4.1).
– If the claimed technical solution to the objective technical problem is obvious to the skilled person, an objection under Art. 56 is raised.
The features contributing to the technical character of the invention should be determined for all claim features in step (i) (T 172/03, T 154/04). However, in practice, due to the complexity of this task, the examiner can normally do so in step (i) on a first-glance basis only; a more detailed analysis is then carried out at the beginning of step (iii). In step (iii), the technical effects achieved by the differences over the selected closest prior art are determined. The extent to which the differences contribute to the technical character of the invention is analysed in relation to these technical effects. This analysis, limited to the differences, can be performed in more detail and on a more definite basis than the one performed at step (i). It may therefore reveal that some features considered at first glance in step (i) not to contribute to the technical character of the invention do, on closer inspection, make such a contribution. The reverse situation is also possible. In such cases, the selection of the closest prior art in step (ii) might need to be revised.
When performing the analysis in steps (i) and (iii) above, examiners must take care to avoid missing any features that might contribute to the technical character of the claimed subject-matter, in particular if they reproduce their understanding of the subject-matter in their own words during the analysis (T 756/06).
The examples in G‑VII, 5.4.2.1 to G-VII, 5.4.2.4 illustrate the application of the COMVIK approach.