Dealing with Non-Technical Features before the EPO

M. M. Fischer (DE)

1. Introduction

The COMVIK approach (T 641/00) is well established case law of the Boards of Appeal and gives guidance on how to deal with inventions defined by a mix of technical and non-technical features. This approach is further elaborated in T 931/95 (Pension Benefit Systems Partnership), T 258/03 (Hitachi), T 154/04 (DUNS) and G3/08. To be precise, the case law and the Guidelines distinguish between three groups of features, a) technical features "as such", b) non-technical features "as such" and c) features which, when taken in isolation, are non-technical, but do, in the context of the invention, contribute to producing a technical effect serving a technical purpose, thereby contributing to technical character of the invention (Guidelines G-VII, 5.4). For instance, features relating to mathematics/algorithms may belong to group c). Only features of group b) cannot support the presence of an inventive step.

2. Non-technical features in the claims

T 154/04 of 15 November 2006 says that it is legitimate to have a mix of technical and "non-technical" features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.

The steps below outline the application of the problem-solution approach to mixed-type inventions, also referred to as "COMVIK approach" or "modified problem-solution approach" (G-VII, 5.4).

The question whether non-technical features are also to be disregarded in the assessment of novelty is more of an academic one. Even though G 2/88, T 154/04 and T688/05[1] answer this question in the affirmative and suggest the concept of "technical novelty", this question does not seem to be undisputed and becomes important if the prior art document is prior art under Art. 54(3) EPC which was the case in T 2050/07 of 19 February 2013. However, the Board refrained from deciding the question because it came to the conclusion that the features in question did contribute to the technical character of the claimed invention.

3. Non-technical disclosures as prior art

a) T 172/03 (Board 3.5.01) of 27 November 2003

In T 172/03 the Board went even one step further and held that non-technical disclosures were not even part of the prior art. The Catchwords read:

"1. The term "state of the art" in Article 54 EPC should, in compliance with the French and German text, be understood as "state of technology", which in the context of the EPC does not include the state of the art in commerce and business methods. The term "everything" in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology.

2. From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons)."

This decision is also cited in Guidelines for Examination under G-VII, 2.

Although this decision was rendered by the same Board (3.5.01) that devised the COMVIK approach, the question arises how T 172/03 fits together with the COMVIK approach. If non-technical features may be entirely disregarded in the problem-solution approach, it seems to be tautological that a non-technical disclosure is excluded from the prior art. To put it differently, if I am allowed to disregard non-technical features in the claims (and put them into the formulation of the problem), there is no need to show them in the prior art. Whilst T 172/03 is not in contradiction with the COMVIK approach, it appears that the question of whether a non-technical disclosure is part of the prior art is simply obsolete in view of the COMVIK approach. The COMVIK approach does not require disregarding non-technical features of the prior art. T 172/03 assumes that the skilled person is skilled in the field of technology and cannot be competent in non-technical fields. The skilled person can neither search nor assess prior art in non-technical fields and will contact a non-technical expert[2], if he is prompted to do so or he will get triggers to technical problems / solutions from the non-technical expert. Maybe, the rationale behind T 172/03 in view of the COMVIK approach is that if all non-technical prior art is excluded, then it cannot qualify as closest prior art and consequently a general-purpose computer must be selected as closest prior art. The reason for this is the following: In the field of computer implemented inventions, in particular business methods, a claim often has as technical feature only a "computing device". All the remaining features are considered to be non-technical features. In an archetypal argumentation following the problem-solution approach, a (notoriously known) general-purpose computer is used as the closest prior art. Even though the non-technical features are considered as a requirements specification and are put into the formulation of the objective technical problem, the objective problem remains a technical one since it typically relates to the implementation of the given non-technical concept/requirements specification by technical means. The next step in the argumentation is to say that starting from a general-purpose computer and given the requirements specification as part of the objective technical problem, the skilled person would face no problems in implementing the requirements specification using technical means. The implementation would be straight-forward since the implementation would not require surmounting any technical problems. In such an argumentation, the examiner would not have to search the non-technical features in the prior art.

Although the disregarded prior art in T 172/03 was a business method which is undisputedly non-technical, it appears that Catchword 2 of T 172/03 could be understood in the sense that even a per se technical teaching can be disregarded if it is disclosed in a non-technical publication/context since "because of its informational character, a skilled person would [not] expect to derive any technically relevant information" therefrom. The article "State of the art: Which art has to be considered?"[3] by Martin Wilming gives six such examples, among those some comic strips, a scene from a James Bond movie and the Holy Bible[4]. I concur with the author that the 1949 Walt Disney comic in which a sunken ship had been raised by Donald Duck and his nephews by pushing ping pong balls into it to lift it up would have had to be considered as "state of the art" in the assessment of patentability of a later patent application. Moreover, the EPO explains in its Inventors` handbook: "A prehistoric cave painting can be prior art. A piece of technology that is centuries old can be prior art. A previously described idea that cannot possibly work can be prior art. Anything can be prior art."[5] However, the Guidelines of Examination at G-IV 2 require that the prior art must be an enabling disclosure: "Subject-matter can only be regarded as having been made available to the public, and therefore as comprised in the state of the art pursuant to Art. 54(1), if the information given to the skilled person is sufficient to enable him, at the relevant date (see G‑VI, 3), to practise the technical teaching which is the subject of the disclosure, taking into account also the general knowledge at that time in the field to be expected of him (see T 26/85, T 206/83 and T 491/99)."[6]

b) T 2101/12 (Board 3.5.06) of 24 January 2018

The invention in T 2101/12 is in the field of electronic signatures for documents. The Board refused to accept D2 as closest prior art document and considered without giving any evidence that the most suitable starting point was common general knowledge, namely an authentication process at a notary`s office. The appellant explained that something could only be state of the art if it were related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03. The Board countered as follows:

"6.5 According to the Board, the wording of Article 54(2) EPC is clear and requires no interpretation:

"The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application"

Article 54(2) EPC itself contains no limitation according to which a non-technical process, such as the signing of a contract at the notary's office, may not be considered state of the art.

6.6 The Board agrees with the appellant that this opinion is not in line with Catchword 2 of T 172/03 (as also relied upon in the Guidelines for Examination G-VII, 2), unless one interprets the expression "technically relevant" in that Catchword in a trivial manner. The Board however considers that the interpretation of Article 54(2) EPC given in T 172/03 is incorrect.

In T 172/03, Reasons 9, it is said that a consistent construction of the patentability provisions "requires the term 'everything' in Article 54(2) EPC to be understood as concerning such kind of information which is relevant to some field of technology". According to the Board, however, the legislator would have used a different term if such meaning had indeed been intended. A more appropriate expression would then for instance have been "all technical information". Instead, the wording of Article 54(2) EPC is unambiguous in that it contains an unqualified "everything", in all three languages ("alles" in German and "tout" in French).

No provision in the EPC requires said term to be interpreted differently. In particular, the appearance of the terms "Stand der Technik" and "état de la technique" in respectively the German and the French version of Article 54(2) does not require it. It is precisely Article 54(2) which defines what should be understood as "state of the art", and because it is a definition one cannot first ignore the definition, by saying that the term "state of the art" should be interpreted in some sense, and only then start to read the definition in the light of that interpretation. This is however exactly what is done in T 172/03 Reasons 9.

As to the statement in T 172/03 Reasons 9 that it "can hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art to take notice of everything, in all fields of human culture and regardless of its informational character", the Board observes that there is in this respect no difference with "technical" prior art, i.e. a skilled person will not take notice of any prior art, regardless of whether it is technical, if it does not contain information that is useful to him or her as a skilled person. On the other hand, if some generally known information is useful, even if it should be designated "non-technical", there is no reason why the skilled person would ignore it.

6.7 The Board further notes that the statement made in Catchword 2 of T 172/03 is not part of established jurisprudence. Most notably, this limited view on prior art has not been mentioned in the summary of the pertinent case law given in T 154/04 DUNS (see point 5 of the reasons), which G 3/08 has referred to for its summary of the case law (see point 10.7.1 and 10.13.1 of the reasons)."

The Board came to the conclusion that an authentication process at a notary`s office constitutes a valid prior art under Article 54(2) EPC and may be used as the starting point in an inventive step analysis. Setting out from this process, the Board continued its argumentation by saying that the desire to automate human activities is a constant one. The Board therefore deemed it obvious that at some point the skilled person will want to automate said activity. The Board furthermore considered it obvious that a skilled person wishing to implement such automation would use commonly available tools for this purpose. The Board concluded that the claimed subject-matter did not involve an inventive step.

Thus, in T 2101/12 a publicly known entirely non-technical practice has been selected as the closest prior art. This is in contradiction with T 172/03, which considers only a technical teaching to be a prior art, and also seems to be in contradiction with step (ii) of the COMVIK approach outlined above which requires, in the selection of the closest prior art, a focus on the features that contribute to the technical character of the invention.

Finally, the Board refused that the following questions be referred to the Enlarged Board of Appeal under Article 112(1)(a) EPC:

"1. In the assessment of the inventive step of subject matter presenting both technical and non-technical aspects, is it compatible with the holding in T 172/03 and the "COMVIK" approach to conduct a problem-solution analysis using a publicly known entirely non-technical practice as "closest prior art", notwithstanding the existence of technical teachings in the same field?

2. If the first question is answered in the affirmative, does it make any difference whether there is a substantial body of prior technical teachings in the field, or only a small number of isolated publications?"

The reason for not referring the questions to the Enlarged Board of Appeal is that the Board has not identified any questions that would need to be answered by the Enlarged Board of Appeal, in order for the present Board to be able to reach its decision. In particular, the Board answered the first question in the negative. However, having given reasons for its deviation from Catchword 2 of T 172/03 (Article 20(1) RPBA, see point 6.6 above), the Board did not have to refer the question to the Enlarged Board of Appeal. The second question depends on an affirmative answer to the first question and thus does not arise.

4. Conclusion

Catchword 2 of T 172/03 is in contradiction with T 2101/12. While T 172/03 is in line - albeit possibly obsolete - with the COMVIK approach, T 2101/12 challenges the COMVIK approach since it took a publicly known entirely non-technical practice as closest prior art. Although there may be good reasons not to follow the harsh decision of T 172/03 to exclude all non-technical disclosures (and possibly even technical disclosures in a non-technical context) from the prior art and in view of the fact that the approach taken by the Board in T 2101/12 may not lead to a different outcome than the COMVIK approach, a deviation from the COMVIK approach seems to be a development in the case law that may cause (unnecessary) uncertainty and confusion among the users of the European patent system. Unfortunately, a referral to the Enlarged Board of Appeal, which could have clarified the situation, has been refused. In view of the importance of the questions of the referral regarding the field of computer implemented inventions, this is regrettable.

M. M. Fischer (DE), German and European Patent Attorney, M.Sc. in Computer Science

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1. "The concept of 'novelty' in Article 54(1) EPC is only defined for 'inventions'. It does not apply to the exceptions enumerated in Article 52(2) EPC. By analogy it could be held that claim features which do not contribute to the definition of an 'invention' cannot be classified as new or not new in the sense of Article 54 EPC."
2. e.g. "notional businessman" as defined in T 1685/15 " Cardinalcommerce"
3. https://www.patentlitigation.ch/state-of-the-art-which-art-has-to-be-considered
4. Whether or not this interpretation of Catchword 2 of T 172/02 was really intended, I have encountered this interpretation many times, not only in Martin Wilming`s article. I am not aware of any decisions of the Boards of Appeal in which this interpretation of Catchword 2 of T 172/03 has been adopted.
5. https://www.epo.org/learning-events/materials/inventors-handbook/novelty/prior-art.html
6. http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_iv_2.htm

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