Technical Effect

The official start date on which European patent applications could be filed was set to 1st June 1978. Only ten days before the first anniversary of this official start date an application was filed that provoked the landmark decision on computer-related inventions seven years later. A method of digitally processing images in the form of a two-dimensional data array was refused by the Examining Division as the method was related to a mathematical method, running on a suitable programmed conventional computer.

In the decision T 208/84 "computer-related invention/VICOM" the Board of Appeal ruled that

• Even if the idea underlying an invention may be considered to reside in a mathematical method a claim directed to a technical process in which the method is used [cannot be excluded from patentability under Article 52 (2) (3) as the method] does not seek protection for the mathematical method as such.


• A computer of known type set up to operate according to a new program cannot be considered as forming state of the art as defined by Article 54 (2) EPC.


• A claim directed to a technical process which process is carried out under the control of a program (whether by means of hardware or software) cannot be regarded as relating to a computer program as such [and thus are not objectionable under Article 52(2)(c) and (3) EPC].

In the decision "T 1173/97 Computer program product/IBM" the Board of appeal took the opportunity to straighten former case law with their improved reasoning and introduced the "further technical effect". Loading a computer program in a computer and running the program is producing technical effects, for example by changing switching states in registers of a central processing unit. These known technical effects should not qualify an invention to be considered as technical. The Board reasoned that only those technical effects that go beyond the "normal" interaction between a computer and a program conferred the necessary technical character to an invention that was required to be not excluded under Article 52 (2) and (3). In the Boards opinion for the assessment of technicality it did not harm that the "further technical effect" may be known from prior art.

In T 0641/00 (Two identities/COMVIK) of 26.9.2002 the Board of apeal found that an invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.

Or to put this the order how a mixed type claim should be examined:

1. Has the subject matter technical character as a whole?
   
   
2. IF YES then for the assessment of inventive step take into account only technical features which contribute to said technical character

The headline of the decision continues: Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.

Or in other words: It is legitimate for a (technical) invention to achieve an aim in a non-technical field. The non-technical aim however cannot be used as a problem to be solved. The problem to be solved must be a technical problem, but the non-technical aim may occur in the formulation of the technical problem as a constraint that is solved by technical means.