By now the way technicality of an invention is judged seems to follow a stable route.

Exclusion Check

The list of exclusion in Article 52 (2) EPC must be viewed as a negative definition of the notion of invention. The first step of examining a patent application therfore is to check if the subject matter of the application might be excluded from patentability under Art 52 (2) and Art 52 (3). Subject matter that is excluded is called a non-invention.

After abandoning the contribution approach only abstract concepts without any technical feature are considered to fall under the term "as such" of Art. 52 (3) (T 0258/03 Auktionsverfahren/HITACHI). In a first step now it is always checked if the subject matter of a patent application is lacking technical character as a whole.

Examples of non-inventions

Business activities

  • Viewing catalogue information on products in a (foreign) language, obtaining a price of products in a (foreign) currency, selecting one or more products to be purchased, selecting an (international) destination for said selected products to be purchased, calculating all costs involved in moving said selected products, including the costs of the selected products and payment of international taxes and duties, to the international destination, ordering the selected products, and generating a commercial invoice for the goods subject to such are transaction were considered as business activities per se an to be not related to any technical field
    (T 959/03)

  • 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)

  • Estimating sales activity of a product at a non-reporting sales outlet by calculating essentially sales activities at reporting sales outlets according to the respective distance between the non-reporting sales outlet and the respective reporting sales outlet is not an invention within the meaning of Article 52 (1) to (3) EPC as it is a business research activity, which does not solve a problem to any technical field.
    (T 154/04 Estimating sales activity/DUNS LICENSING ASSOCIATES, L.P.)

    The claim was directed to a "method for estimating sales activity" and mentioned only the use of a database. The board of appeal held that the term "database", in particular, may be construed to designate any collection of data so that this claim emcompasses methods which may be performed wihout using any technical means at all.

  • A performance rating of service providers is a an administrative task that has in respect to a online ordering system a non- technical feature (T 1930/06).

Selecting and presenting information, mental acts and organisational measures

  • 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).

    At least the application failed to disclose technical features to do so. The case would have been different if the attributes to categories the content and the advertisement would have been selected automatically. From the application it is not visible if the applicant had an automatic analysis in mind (which would have been technical).
  • A general reference to "transport utilisation" is not an adequate definition of a specific technical purpose which could confer a technical character onto any of the mathematical, administrative and commercial rules and steps. It is true that a complex situation may require a complex choice of product orders and transport allocation to arrive at an optimum of product costs and transport utilisation. As the application discloses just a generic computer-implementation of an organisational and mathematical algorithm it is not sufficient on its own to render the algorithm technical.
    (T 1806/07)
  • "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.

Data structures

  • 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)

How to avoid a non-technical character?

In various cases now-a-days a rejection due to lack of a technical effect could have been avoided by simply referring explicitly to a computer in the claim. In contrast hereto the mere expression of a wish for automation in its generality would not be interpreted as involving technical means.[1] In the event the use of a computer seems to be indispensable due to the complexity of calculations that cannot be solved by a pure mental act, then the computer is an essential feature of the claim and must be included in the claim. However, the board of appeal doubted as a matter of principle that complexity can be used to disqualify an activity as a mental activity (T 914/02).

For method claims it is sufficient to add the feature of a "computer implemented" method in the claim. Of course, if the invention as claimed or disclosed lacks any technical features then the application is rejected for lack of novelty. For example it is accepted that technical considerations might be necessary to process data, for example using attributes facilitating to convert data into a computer-friendly form. But if the claim merely specifies that this data is stored in databases, then the technical contribution is trivial. (T1000/08).

Examples for technical features

  • The secure exchange of messages implies a technical effect and the underlying rules of mathematics serve the purpose of solving a technical problem. The limitation of the claim to a "computer-implemented method of creating a key pair for RSA coding or signing" embeds the [mathematical rules of] determining a key pair with the method of RSA coding or signing and creates a functional link between them.
    (T 1326/06)