Chapter 1. Principle
It may happen that an invention has both technical and non-technical characteristics (G-VII Guidelines 5.4), if they are taken in isolation.
However, the fact that a feature is non-technical is not sufficient to exclude it from the reasoning of inventive step: it is wrong to conclude that the object claimed is not an invention because only the characteristics techniques contribute to the state of the art (T154 / 04).
These & #8220; non-technical & #8221; can fully contribute to inventive step if they contribute to the technical character of the invention to solve a technical problem (#8217; inventive step)T336 / 14).
Thus, the question that we are going to ask ourselves within the framework of a #8217 invention; a mixed #8221; is: do the characteristics contribute to the technical nature of the invention?
Therefore, the criterion of the technicality or not of the characteristic (taken individually) is not the relevant criterion: we must look at the criterion of contribution to the technical character of the invention taken as a whole.
A reasoning of type & #8220;the invention is not inventive because the only technical contribution is the fact of resorting to a computer& #8221; n & #8217; is not acceptable (T471 / 05 or T625 / 11).
Chapter 2. Approach to follow
Section 2.1. Characteristics not contributing to the technical nature?
Features that do not contribute to the technical character of the invention can not support the existence of an inventive step (T641 / 00).
This may be the case, for example, where a feature only helps to solve a non-technical problem, such as a problem in a domain excluded from patentability (G-VII Guidelines 5.4).
Section 2.2. Characteristics contributing to the technical character?
To identify these non-technical features (but to be considered for the inventive step), it is necessary to identify the steps that have a technical contribution (G-VII Guidelines 5.4).
To conduct a rigorous analysis, the guidelines (G-VII Guidelines 5.4) propose a systematic approach based on the problem-solution approach mentioned above:
- identification of the characteristics contributing to the technical character of the invention as a whole;
- selecting a prior art closest according to this identification;
- identification of differences;
- determining the technical effects of the differences in order to identify the differentiating characteristics that contribute to the technical character of the invention (ie those having a technical effect in the context of the invention as a whole).
The characteristics then contributing to the technical character of the invention will then be used for the reasoning of inventive step in a conventional manner.
But of course, nobody has ever given a definition of what is meant by "contribution to the technical character" ...
Section 2.3. Indications concerning the contribution to the technical character
At this stage, and in the light of the case law, we can consider that the characteristic considered must fulfill one or the other of these conditions to have a technical contribution:
- it allows a specific technical implementation (ie linked to the specific internal functioning of a computer or a hardware implementation);
- is often considered as insufficient a simple programming, a standard technical implementation, the fact that an algorithm is simply efficient, fast, etc.
- it allows a particular application to a particular technical field (ie technical purpose):
- is often considered insufficient to reference a generic application (ie & #8220; control of & #8217; a technical system & #8221;)
- the application to this technical field must be effective and not only possible.
- this purpose can be & #8220; output & #8221; of the process (e.g. determination of #8217; an operating parameter of a nuclear power plant T625 / 11).
- this purpose can also be seen in the parameters of the process input (e.g. operating temperature, pressure, T625 / 11).
But once I said that, I didn't say anything because there is no definition of the technical word & #8217;
Therefore, we must look at the case law to navigate between the concepts and to know what we can protect.
Chapter 3. Examples of technical contributions
Section 3.1. Examples in the IT field
A technical contribution may be, for example (Guidelines G-II 3.6):
- the control of an industrial process,
- the internal functioning of the computer itself or its interfaces under the influence of the program
- the fact that the program affects the efficiency or safety of a process,
- the fact that the program has an impact on the management of the necessary IT resources
- the fact that the program affects the data transfer rate in a communication link.
It should be noted, however, that the acceleration of a calculation time is not in itself, for the Boards of Appeal, a technical effect capable of contributing to the technical character of an invention (T1370 / 11).
Section 3.2. Examples in the field of artificial intelligence (AI)
(Between us, artificial intelligence must be treated like any computer algorithm, but as the Directives give us specific examples I reproduce them)
A process implemented by an AI can be technical if its field of application is (Guidelines G-II 3.3.1) :
- Medicine ;
- classification of images, videos, sounds.
However, the following will not be considered as technical, the application to:
- the classification of textual documents based solely on their textual content (??? what ???);
- classification of abstract data;
- network data classification.
Of course, we can totally try to save the last cases by adding another technical purpose, ex. textual data classification to determine the best way to compress these data.
Section 3.3. Example in the area of presentation of #8217 information and #8217 user interface
As an illustration, a presentation of information contributing to the proper functioning of a machine (e.g. user guide to correctly use the underlying technical system) may participate in the resolution of a technical problem, while #8217; a presentation of information contributing to a better reading / analysis of a user (eg understanding or memorizing the steps for implementing the machine) should be considered non-technical (T336 / 14).
In addition, a method that makes a haptic feedback more "realistic" would be technical, whereas a method "increasing the degree of engagement of players" (which is purely subjective) would not be (T339 / 13).
Section 3.4. Examples of simulation methods
In particular, the methods of simulating & #8217; objects (eg CAD) implemented by computer have a technical effect if this method has a future purpose, because & #8220;these are modern technical processes that play a vital role in manufacturing” (G-II Guidelines 3.3).
A method of simulating the performance of an electronic circuit using a mathematical method may be patentable if the mathematical method (which is not technical in itself) details how the simulation takes place and is related to the technical problem of simulation (T1227 / 05 and Directives Guidelines G-VII 188.8.131.52).
This point will probably be reviewed after the forthcoming decision on G1 / 19.
Section 3.5. Examples concerning mathematical methods
Moreover, mathematical methods implemented by computer have a technical effect if their goal is technical (G-II Guidelines 3.3).
Section 3.6. Examples of business methods
A method to facilitate purchases (yes, I know, it goes wrong, huh?) may be patentable if the distinguishing feature is the determination of an "ioptimal purchasing route for the selected products by accessing a cache where the optimal purchasing routes associated with previous requests " (T1670 / 07 and T279 / 05 and Guidelines G-VII 184.108.40.206).
Indeed, for the EPO, this characteristic has a technical contribution, because it concerns the technical implementation and has the technical effect of allowing the rapid determination of the optimal purchasing route by accessing the previous requests stored in a cache memory. .
To identify the technical characteristics, the decision T144 / 11 gives us a small methodology:
- We establish the need "business";
- We include in this business need all technical information required the realization of this "business" need (because otherwise the technically qualified person should design them, which is not his responsibility);
- We formulate the technical problem on this basis.