b) The Comvik approach 

The Comvik approach was applied in T 641/00 (OJ 2003, 352). It is a conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that contribute to the technical character are considered for inventive step. It is well established that non-technical elements do not contribute to inventive step. That is the basic principle of T 641/00 (see T 1463/11, T 630/11).

Comvik sets out an approach to ensuring that non-technical issues do not influence the decision on inventive step. It is to include the non-technical elements in the statement of the technical problem to which the skilled person seeks a solution. Most often, this is in the form of non-technical requirements (T 630/11).

The Comvik approach may be more appropriate where the technical part is more substantial and/or relevant prior art exists. It has the advantage that any non-technical feature known from this prior art will not appear as a difference and does not need to be considered in the subsequent steps, thus not requiring the step of judging whether it makes a technical contribution. Furthermore, this approach is less abstract since the claimed features can be analysed against concrete prior art (see T 756/06 and T 928/03). Thus, when assessing the inventive step of the subject-matter of such a claim, all features of a technical character are taken into account, whereas features which do not form part of a technical solution to a technical problem have to be disregarded in this assessment (T 641/00, OJ 2003, 352; T 1344/09; T 1543/06). The board stated that "... 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."

In T 1461/12 the board noted that the appellant had taken issue with the fact that the assessment of inventive step based on T 641/00 involved referring to Art. 52(2) and (3) EPC – and thereby allegedly mixed the requirements of Art. 52 and 56 EPC in an inappropriate manner. In this respect, the board pointed out that the "contribution approach" is typically understood as a test determining whether the difference between the claimed invention and the prior art lies exclusively in a field excluded from patentability under Art. 52(2) EPC and, if so, finding that claimed invention as a whole does not comply with Art. 52(2) and (3) EPC. That is, according to the contribution approach, compliance of an invention with Art. 52(2) and (3) EPC is determined only in view of its contribution over the prior art. This approach was abandoned in T 1173/97 (OJ 1999, 609, point 8 of the Reasons; see also G 3/08 date: 2010-05-12, OJ 2011, 10, point 10.6 of the Reasons), which found that compliance with Art. 52(2) and (3) EPC can be established by features already known in the art. The approach based on T 641/00 (the Comvik approach) relates to the assessment of whether an invention comprising technical and non-technical features involves an inventive step over the prior art. Evidently, an inventive step vis-à-vis the prior art depends on the "contribution" that the claimed invention makes over the prior art. Establishing this contribution is necessary in any method of assessing inventive step, T 641/00 included, but is not equivalent to the "contribution approach".

The board specified that an inventive step can only be acknowledged for an invention which makes a technical contribution to the art (see, inter alia, T 38/86, OJ 1990, 384; T 1173/97; T 1784/06), i.e. a contribution in a technical field. Furthermore, the jurisprudence of the boards of appeal has developed the understanding that the subject-matter excluded from patentability by way of example in Art. 52(2) and (3) EPC concerns fields considered to be non-technical (see T 931/95, OJ 2001, 441; and T 1173/97). It is true, therefore, that the established way of assessing inventive step under Art. 56 EPC makes reference to Art. 52 EPC. However, this does not mean that the assessment of both requirements is "mixed" (see on this point T 1784/06, point 2.2 of the Reasons). Contrary to the appellant's argument, the assessment of the requirements of Art. 52 and 56 EPC remains separate.

In T 528/07 the invention, a computer system, consisted of a mixture of technical and non-technical features. The board stated that in order to examine this type of subject-matter the board would normally apply the "Comvik approach" (see T 641/00). The appellant had, however, argued that since Art. 52(1) EPC had been brought into line with Art. 27(1) TRIPS, it had to be interpreted in the light of the object and purpose of TRIPS and that would require a modification of the Comvik approach. The board held that under Art. 27(1) TRIPS a patent shall only be granted if it is new and involves an inventive step. TRIPS however does not stipulate how these requirements are to be applied. The TRIPS member states are free to adopt different standards for each patentability requirement, such as inventive step. The Comvik approach is one facet of the standard applied by the EPO.

In T 531/03 the board stated that an attempt to take into account the contribution of non-technical and technical aspects on an equal footing in the assessment of inventive step would not be in conformity with the EPC, since the presence of inventive step would in such an approach be attributed to features which are defined in the EPC as not being an invention.

In T 912/05 the board noted that, according to the principles set out in decision T 641/00 (OJ 2003, 352) and confirmed in T 258/03 (OJ 2004, 575), an invention within the meaning of Art. 52(1) EPC is to be assessed with respect to inventive step by taking account of only those features which contribute to its technical character, whereas features making no such contribution cannot support the presence of inventive step. Although the board agreed with the case law referred to above, it found that in the case at issue it was not necessary to seek to separate features that were essentially business-related, and thus not relevant for the solution of a technical problem, from those features that, as essentially technical, should be taken into account when assessing inventive step. It concluded that the assessment of the inventive step of a business-related method might be possible without a preliminary clear-cut separation between business-related features and technical features.

In T 756/06 the board noted that another approach is also generally followed by the boards of appeal (see also T 1344/09). In the approach followed in T 931/95 (OJ 2001, 441), there is an initial analysis of the technical character of the features of the claim and then a consideration of the inventive step of only those features. This approach is typically used for inventions that are essentially business methods running on more or less notoriously known computer hardware.