An invention must be assessed as a whole. If an invention makes use of both technical and non-technical means, the use of non-technical means does not detract from the technical character of the overall teaching. The European Patent Convention does not prohibit the patenting of inventions consisting of a mix of technical and non-technical elements. Therefore it is not necessary to give a relative weighting to a claim's technical and non-technical features to decide whether the claim relates to a computer program as such (T 26/86).

The term non-technical is used to refer to features within the meaning of Article 52 EPC that are explicitely exluded from patentability.

A typical non-technical features for example would be to calculate all possible options for shipment of a parcel and to select the cheapest option. This is a feature that involves no technical considerations as it could be also done as a mental act by a human (with pencil and paper). The mere use of a computer for the calculation would add a technical aspect to the non-technical feature and such a claim would then be not exluded as comprising non-patentable subject matter under Article 52 EPC (but will be rejected in a following examining step for lack of inventive step).

As features that are considered not to contribute to the solution of any technical problem by providing a technical effect have no significance for the purpose of assessing an inventive step (T 1053/98) the examiner will only compare the technical features of the application with the technical features of the closest prior art. All non-technical features of the application and all non-technical features of the priort art will be ignored. Thus if the only difference between the application and the prior art are the non-technical features, the application has to be rejected due to lack of inventive step. However, as explained in more detail below, in mixed-type claims the technical problem may include non-technical aspects whether novel or not, but the non-technical aspects are not regarded as contributing to the solution (T 641/00).

In the problem-and-solution approach an objective technical problem has to be formulated. Only those technical features that contribute to a solution of the technical problem are considered for the assessment of inventive step and any other technical features have to be disregarded. If no objective technical problem is found, all technical features have to be disregarded, e.g. no technical feature is left. But without any technical feature left for the assessment of inventive step there is no contribution to the art and consequently no inventice step.

The requirement of a technical problem can be also deducted from Rule 42 (1) (c) EPC 2000 that states that the description of [a patent application] shall disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solutioncan be understood. This requirement was considered to be mandatory. If it is not fulfilled then an invention within the meaning of Article 52 EPC does not exist (T 26/81).

The definition of a technical problem, however, is difficult if the actual novel and creative concept making up the core of the claimed invention resides in the realm outside any technological field as it is frequently the case with computer implemented inventions. Defining the problem without referring to this non-technical part of the invention, if at all possible, will generally result either in an unintelligible vestigial definition, or in a contrived statement that does not adequately reflect the real technical contribution provided to the prior art (T 154/04).

On the other hand, it is not harmful to an invention if a technical solution of a technical problem is pursuit only for the purpose of effects that are achieved in a non-technical field, such as cost advantages. Therefore in the event a claim is examined that defines an aim to be achieved in a non-technical field this aim may legitimately appear in the formulation of the objective technical problem in the form of a "requirements specification". The “requirements specification” for example describes the behaviour of the system to be developed and provides to the person skilled in a technical field as part of the framework (T 1053/98) of the technical problem that is to be solved, the constraints of the system that have to be met.

The formulation of the "requirements specification" has the additional desirable effect that the non-tecnical aspects of the claimed invention, which generally relate to non-patentable desiderata, ideas, and concepts and belong to the phase preceding any invention, are automatically cut out of the assessement of inventive step and cannot be mistaken for technical features positively contributing to the inventive step. Sinec only technical features and aspects of the claimed inventionshould be taken into account in assessing inventive step, i.e. the innovation must be on the technical side, not in a non-patentable field (see also T 531/03), it is irrelevant whether such a non-technical aim was known before the priority date of the application, or not. (T 154/04)

Using the "requirements specifications allows to formulate a quite general technical problem, or a technical problem at all. With the corrective of the "requirement specification" it is avoided that technical problem and technical solution fall as far apart that the inventive step would be almost always existent.

An application was directed to a facsimile apparatus with means for registering a plurality of user names, display menas for displaying these user means and user operable selection means to display a user name. This means were known from prior art (abbreviated).

Not known from prior art were processor means adapted to cause individual communication results each including at least the user naem to be stored in store means and record means for outputting a user report listing only the communication reuslts for a selected user (abbrievated).

This invention allows the telefax costs supervised for each individual user. As the closest prior art did not comprise nor suggest that the stored user data could be used for cost tracking the applicant proposed a quite general problem, which would had produced a big gap between prior art and solution, thus suggesting the presence of an inventive step:

Adding functionalities to the known telefax machine such that the efficiency and cost effectiveness are increased.

The Board of Appeal saw the overall aim of the invention as an economic aim, namely charge control. Usually such economic, ie non-technical aims are not taken into account when formulating the technical problem. In the Board of Appeals eyes it was the non-technical part of the solution which provides an incentive for the technical part, namely to adapt the known fax machine in such a way that it can be used by several departments while fulfilling monitoring requirements. In order to formulate an adequate technical problem the Board included in its technical problem parts of the non-technical solution (monitoring costs):

Providing means for monitoring the costs incurred by each user of a facsimile apparatus.

This formulation poses to the skilled person the technical problem "providing means" within a non-technical framework "monitoring cost incurred by each user" which has to be observed by the skilled person when looking for a technical solution to the technical problem. Starting with this problem the skilled person arrives in a straight forward way at the solution as claimed by the invention. The application was therefore rejected due to lack of inventive step.

T 1053/98 Data communication apparatus / CANON KABUSHIKI KAISHA