Once the hurdle of being a (technical) invention is passed, the next hurdle to be taken is that the invention provides a further technical effect, which is new and implies an inventive step.

Examples for lacking a further technical effect

  • Saving time or energy, reducing traffic load etc. by applying purelyadministrative or business solutions do not confer a technical character to such a solution.
    (T 172/03)
  • A data structure in the form of a tree is not in itself a technical feature. It is merely a way of arranging information on an abstract level, not fundamentally different from, for example, alphabetic ordering.
    (T 1875/07)
  • Comparing two web spaces in respect of their traffic pattern is not a technical feature as traffic patterns depend on the personal tastes of the users of the network and consequently on the contents of the information displayed on the page. Thus the knowledge for recognizing if two web spaces are similar so that their traffic patterns could be expected to be more or less similar does not necessarily imply familiarity with the technical aspects of the data base the web spaces are stored in.
    (T 1857/07)
  • The idea to select the most suitable advertisement is of commercial nature, collecting appropriate data requires only knowledge about human interests, formulating selection rules is a matter of logic, and proposing suitable equations a task for a mathematician. Therefore the purpose to decide the contents of advertisements to be shown to a describer is not technical. (T 1000/08).
  • "Filters" for removing requests from the business records, when certain criteria are met, may reduce the flow and amount of information presented to the user of the service. This may be felt by the user as an advantage or disadvantage, but it does neither solve any concrete technical problem nor does it qualify as a technical effect in the sense that it contributes to the solution of a technical problem.
    (T 696/06).

    The use of the word "filter" for a non-technical process suggests a technical meaning, as filters are known from signal processing as technical elements to suppress certain frequencies. Filtering in data processing may be also termed as "selecting information according to pre-defined criteria". Such a selecting process would be seen as a mental act or a mere organisatorial measure.
  • A procurement system that sorts components into those which are relatively cheap and therefore should be ordered when they are required, and those for which suppliers should be asked to prepare bids, in the hope that the price can be reduced does not imply a technical effect. If there is a reduction in processing, it is because there are fewer bids to request and process. There would be the same reduction in processing if the bids were requested by telephone, by e-mail, or in face to face conversation. It is, then, an effect which is not tied to technical implementations of the method, but which applies to any implementation, whether technical or not.
    (T 711/08) 

Further technical effect accepted

  • A computer-executable file search method, even if the data searched is of commercial nature, may provide a further tehcnical effect. As the kind of data to be searched, does not effect the search it has no technical relevance per se. The technical effect in the present case is to control the computer along a path leading to the desired data at a certain memory location.
    (T 1351/04)

Functional features

Functional features leave their technical implementation undefined and therefore do not add an inventive step. "Comparing means" for example is a functional feature, which do not require any further reaching technical considerations (T 1000/08). In the event that the application discloses a new way for providing that well-known functional feature then the specific technical features, if included in the claim, may involve an inventive step and a patent may be granted.

In various cases a structural feature of the patent claim is accompanied by a specific purpose. For example when "collecting information" is specified as "collecting advertisement information". The Board of appeal considered collecting information as not technical since it could be done manually. Organizing the data in a suitable way (e.g. as tables) requires logic but no technical skills since it could also be done manually. The Board of Appeal noted that characterising the data to be inserted into the content send to a user requires the same kind of descriptive skills whether or not the data represents advertisements. Therefore the Board did not accept the appellant's argument that the non-technical aspects of the invention (e.g. collecting data) would be limited to the kind (advertisement) of data processed. (T 1000/08).