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 "non-technical" features can quite contribute to the inventive step if they contribute to the technical character of the invention to solve a technical problem (T336 / 14).
Thus, the question that will arise in the context of a "mixed" invention is: do the characteristics contribute to the technical character of the invention?
Consequently, the criterion of the technicality or not of the characteristic (taken individually) is not the relevant criterion: it is necessary to look at the criterion of contribution to the technical character of the invention taken as a whole.
Steps to follow
Characteristics not contributing to the technical character?
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).
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, no one has ever given a definition of what is meant by "contribution to the technical character" ...
Information concerning the contribution to the technical nature
At this stage, and in the light of case law, we can consider that the characteristic considered must fulfill one or other of these conditions in order to have a technical contribution:
- it allows a particular technical implementation (ie linked to the specific internal functioning of a computer or a hardware implementation);
- is often considered insufficient a simple programming, a standard technical implementation, the fact that an algorithm is simply effective, fast, etc.
- it allows a particular application to a particular technical field (ie technical purpose):
- is often considered insufficient reference to a generic application (ie "control of a technical system")
- the application to this technical field must be effective and not only possible.
- this purpose can be the "output" of the process (eg determination of a parameter of operation of a nuclear power plant T625 / 11).
- this purpose can also be reflected in the input parameters of the process (eg operating temperature, pressure, T625 / 11).
But once I said that, I said nothing because no definition of the word technical exists.
Therefore, we must look at the case law to navigate between the concepts and to know what we can protect.
Focus on the application to a technical area
It is interesting to ask what are the possible "technical fields".
Without listing them exhaustively, the decision T1798 / 13 gives an interesting interpretation or at least which has the merit of existing: the members of the board of appeal consider that this field should a technical system that it should be possible for those skilled in the art to improve.
Thus, the weather forecast is, for the Board of Appeal, not technical, because it is not possible to improve “the weather” (this forecast would only be a discovery for the Board).
This approach leaves me very perplexed ... indeed, it would in fact exclude:
- methods of improving imaging in medicine;
- seismic methods in the petroleum industry;
Even if improving a technical system seems to me to be part of a technical field, I do not think that this is limiting.
Examples of technical contributions
Examples in IT
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).
Examples in the field of artificial intelligence (AI)
(Between us, artificial intelligence must be treated like any computer algorithm, but as the Guidelines give us specific examples I reproduce them)
A method implemented by an AI may be technical if its scope is (Guidelines G-II 3.3.1) :
- Medicine ;
- the classification of images, videos, sounds.
Nevertheless, will not be considered 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.
Example in the field of information presentation and user interface
By way of illustration, a presentation of information contributing to the proper functioning of a machine (e.g. guide the user to correctly use the underlying technical system) may participate in the resolution of a technical problem, while a presentation of information contributing to a better reading / analysis of a user (e.g. understanding or memorizing the stages of setting up the machine) should be considered as non-technical (T336 / 14).
Thus, it is necessary that the information credibly assists the user in performing a technical task through a continuous and guided human-machine interaction process (T336 / 14).
The simple fact of displaying information in order to facilitate a diagnosis will not be technical (T1091 / 17).
In addition, a method making haptic feedback more "realistic" would be technical, while a method "increasing the degree of player engagement" (which is purely subjective) would not be (T339 / 13).
Examples of simulation methods
In particular, computer-implemented object simulation methods (eg CAD) have a technical effect if this method has a future purpose because " 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 184.108.40.206).
This point will probably be reviewed after the forthcoming decision on G1 / 19.
Examples of mathematical methods
Moreover, mathematical methods implemented by computer have a technical effect if their goal is technical (G-II Guidelines 3.3).
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 220.127.116.11).
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.