TY - JOUR
AU1 - Baldus,, Oliver
AB - A patent is an industrial property right that protects a technical solution for a technical problem. An invention is a technical teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result.1 1 G 0002/07 (Broccoli/PLANT BIOSCIENCE) of 9.12.2010, 6.4.2.1 based on BGH GRUR 1969, 672—Rote Taube. Patent claims legally define what technical subject matter should be protected by listing its technical features required for solving an associated technical problem. Only products that incorporate all of these features actually infringe the granted patent. Thus, patent claims are an essential part of every patent application for providing the legal infringement requirements. Actual patent claims often contain both technical and non-technical features. This is often the case in patent applications for computer-implemented inventions. In granting procedures, the European Patent Office (EPO) often disregards the non-technical features in claims when assessing the inventive step. This follows the Comvik approach2 2 Case Law of the Boards of Appeal of the European Patent Office, Ninth Edition July 2019, I.D.9.1.3. that deals with what happens when a claim includes both technical and non-technical features. The author Dr Oliver Baldus is German and European Patent Attorney and one of the managing partners of Splanemann Patent Attorneys located in Munich. He holds degrees in physics and economics and is author of numerous articles relating to economic aspects of patents and the protection of computer programs and artificial intelligence within the German and European patent system. This article In patent granting procedures, the European Patent Office often disregards particular features in claims when assessing the inventive step due to alleged non-technicality. This agrees with the Comvik approach, according to which only features with technical character are to be considered for an inventive step assessment over the prior art. In this context, it is often assumed that features have either technical or non-technical character per se, ie merely by their nature. Further, the Comvik approach is often misunderstood as only being relevant for computer inventions. This article reviews the Comvik decision and sheds light on how to correctly assess the technicality of features, on the usage of functional chains to surmount the Comvik approach and how to correctly determine features as technical or non-technical. It shows that the Comvik approach for assessing technicality is basically wrong. Currently, most people believe that a particular feature is either technical or non-technical merely by its nature.3 3 Decision of Technical Board of Appeal, T 0931/95 (Controlling pension benefits system/PBS PARTNERSHIP) of 8.9.2000. For example, a nail or a computer is always regarded as a technical feature, whereas a vase is seen as a non-technical feature in the form of an aesthetic creation.4 4 M Singer, D Stauder and S Luginbühl, Europäisches Patentübereinkommen (8th edn Singer / Stauder / Luginbühl, EPÜ - Europäisches Patentübereinkommen, Carl Heymanns Verlag 2019) art 52, No 13. This article critically analyses the Comvik approach, sheds light on whether features can be classified as technical or non-technical and explains functional chains as a measure to overcome the Comvik approach. It offers a hands-on guide to improve the drafting of patent applications and to practically eliminate Comvik objections regarding non-technicality of features. The Comvik decision—T 641/00 According to the Comvik decision,5 5 Decision of Technical Board of Appeal 3.5.1 dated 26.9.2002 T 641/00 – 3.5.1; also Decision of Technical Board of Appeal T 1344/09 of 19.6.2012; Decision of Technical Board of Appeal T 1543/06 (game machine/GAMEACCOUNT) of 29.6.2007. only those differences over the prior art that contribute to the technical character of the invention are to be considered when assessing the inventive step of the invention. Correspondingly, features that do not form part of a technical solution to a technical problem have to be disregarded in this assessment. Any non-technical feature known from prior art will not appear as a difference and does not need to be considered in the subsequent steps.6 6 Case Law of the Boards of Appeal of the European Patent Office, Ninth Edition July 2019, I.D.9.1.3. The board stated that: where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step. (emphasis added) This cryptic statement requires detailed consideration. The Comvik decision directly refers to ‘technical character’ as a basic criterion for the consideration of features. However, although the technical character is seen as a general requirement for granting patents, the term remains unclear and undefined.7 7 See Guidelines for Examination in the EPO, 12/2018, I-A, 1.1 or I-D, 9.1.1. Here the technical character is discussed without giving a valid criterion how this ‘technical character’ is to be defined. For example, one indication of the ‘technical character’ of a method is that the method has an overall technical effect, such as controlling some physical processes.8 8 Decision of Technical Board of Appeal T 0208/84 (Computer-related invention) of 15.7.1986; also Decision of Technical Board of Appeal T 0313/10 (Item matching/AMAZON) of 19.7.2012. Further, at least all features that technically contribute to the solution of the problem of an invention involve a technical character.9 9 Singer, Stauder and Luginbühl (n 4) No 16. Computer programs involve a technical character only if the computer program generates a further technical effect that ‘goes beyond the “normal” physical interactions between the program (software) and the computer (hardware) on which it is run’.10 10 G0003/08 (Programs for Computers) of 12.5.2010, 10.3. Even isolated features excluded from patentability according to Article 52(2) EPC may nonetheless contribute to the technical character of a claimed invention, and therefore cannot be discarded in the consideration of the inventive step.11 11 ibid, 12.2.2. In general, the criteria for determining a technical character are vague and undefined.12 12 Ibid, 9.2. Thus, a technical character must be assumed when a feature can provide—at least theoretically—a minimal technical effect to an arbitrarily selected (‘any’) technical problem.13 13 Decision of Technical Board of Appeal 3.5.1 dated 26.9.2002 T 641/00 – 3.5.1. This requirement can be called the any criterion of the Comvik decision. According to the any criterion, every feature that can at least theoretically cause a technical effect has significance for the purpose of assessing the inventive step. Technical features and technical problems When applying the any criterion, it must be asked for which features a technical effect can be absolutely excluded; only these features are the non-technical ones. Thus, it is possible to determine absolutely for every feature whether it lacks technicality. The any criterion allows features to be classified as either technical or non-technical, ie those having a technical character or those lacking a technical character. However, this distinction on the basis of the any criterion is wrong since more precisely features must be distinguished from non-features. A feature has to be seen as something characteristic to the claimed subject matter. Thus, a feature within a claim influences the design of the claimed subject matter. In contrast, a non-feature is something that does not influence the claimed subject matter and has no substantial effect on it. For example, a thread, a head or a colour of a screw is a feature of the screw since each influences its appearance. However, a non-feature of the screw is whether the screw is within a box, hidden behind a cover, or the sky is blue since this does not affect its appearance. Since a non-feature does not substantially affect the design of the claimed subject matter, it cannot—as a matter of principle—cause a solution of any technical problem associated with this subject matter. In European Patent 0 579 655, which is the subject of Comvik, a subscriber identity module (SIM) of a cell phone differed from the prior art in that it was allocated at least two identities (A), at least two identities were selectively usable (B), and the selective activation could be used for distributing the costs for service and private calls or among different users (C). Technical Board of Appeal 3.5.1 concluded that (A) and (B) are technical features, whereas (C) is a non-technical feature and accordingly disregarded it for assessing the inventive step. However, under the above definitions, (A) and (B) are features of the SIM, whereas (C) is a non-feature that does not affect the design of the system. This minor formal difference in primarily distinguishing between features and non-features instead of technical and non-technical features has severe consequences. Since non-features cannot cause a technical effect as a matter of principle, it then must be asked whether features can exist that completely lack any technical effect, although they are responsible for certain characteristics of the claimed subject matter. Do these features without technical effect exist in reality? According to the any criterion, the feature of a nail, for example, always has technical character since the nail can at least theoretically contribute to the arbitrary technical problem of fastening an item. However, a nail can be also provided as a bullen nail for adornment or as a decorative element within the invention context. A vase can be seen as a vessel for holding water as well as an aesthetic object. In contrast, a cup can be seen as a technical feature14 14 See n 10, 9.2. or as an aesthetic feature. A golden finish added to a surface can be seen as preventing corrosion or as a decorative element. While the first is a technical object, the latter is non-technical. A profile of a tire can have the technical effect of increasing the grip but its shape can also have a purely aesthetic purpose. The colour of an item can affect its optical appearance for human perception; however, it can also have a technical effect when used in a dye laser. Setting a bit can lack technical character in the context of one invention, yet can be absolutely necessary for solving a technical problem in another. Every three-dimensional body can be seen as a technical means for displacing air from its volume, but also as an aesthetic creation. A computer program can be seen as a method for generating current to control a processor. Thus, it turns out that in contrast to non-features, every feature always involves technical as well as non-technical aspects. In fact, every feature can have some kind of technical effect when viewed from an appropriate perspective or placed in an appropriate context. Conversely, this feature can also be seen from a non-technical perspective. However, if there are no features for which a technical effect can be absolutely excluded, all features within a claim must be regarded either as technical or non-technical ones. Like in quantum mechanics, the term feature is originally simultaneously in both states, ie technical and non-technical. When striking a concrete technical problem, it collapses into a technical or non-technical state depending on whether it provides a contribution to its solution. Therefore, features cannot be absolutely technical with respect to any technical problem; they can only be relatively technical with respect to a concrete problem. Which of the feature’s aspects, ie the technical or non-technical, is to be considered must be determined based on the particular technical context in which the feature is embedded. Thus, whether a feature is a technical or non-technical one cannot be determined from the feature alone, ie from the feature as such; it has to be determined based on whether the feature helps to solve a particular non-arbitrary technical problem within the concrete context of the invention. Thus, whether a feature is a technical or a non-technical feature must not be assessed on the basis of the any criterion, but rather on a factual contribution to the predefined technical problem. This is called the context criterion. Functional chains A feature is always to be considered a technical one, ie involving technical character, if it acts together with other technical features to actually solve an overall technical problem and is thus indispensable in solving the identified technical problem.15 15 Decision of Technical Board of Appeal T 1814/07 (Index disorder/CARDIAC INTELLIGENCE CORP.) of 2.9.2008; O Baldus, ‘A Practical Guide on How to Patent Artificial Intelligence (AI) Inventions and Computer Programs Within the German and European Patent System’ (2019) 12 EIPR 750; Singer, Stauder and Luginbühl (n 4) No 20. This is the only way to correctly determine the technicality of features. In consequence, the technical features in a patent claim should be formulated so that they combine linguistically, logically and technically to form a functional chain for the overall problem to be solved.16 16 O Baldus and M Barth, ‘Nicht-technische Merkmale und die Wirkungskette’ (2018) 12 Mitteilungen der deutschen Patentanwälte 529. In this case, it is not possible to individually disregard particular features from the functional relationship within the functional chain without destroying the overall problem-solving effect. Omitting or ignoring just one feature in the functional chain would render the intended solution infeasible. For example, if a computer program successfully prevents overheating and subsequent breakdown of a microprocessor, then the problem can be classified as a technical one. Thus, this computer program has a technical character in general and overcomes the legal exclusions.17 17 Example from Baldus (n 15). A claim with a technical–logical functional chain for solving this defined technical problem could read as follows: Method for operating a microprocessor comprising the following steps: determining a temperature of the microprocessor, allocating a clock rate to the temperature of the microprocessor and operating the microprocessor at the allocated clock rate. Although the second step of allocating a clock rate to the temperature of the microprocessor in itself could be considered as merely assigning one digital value to another by data processing, the central technical effect resides in this very feature. The processor is operated with a clock rate selected according to the temperature and can be prevented from overheating and destruction only by this central feature, which therefore undoubtedly contributes to the invention’s technical solution. However, this step first requires the temperature of the microprocessor to be determined. In turn, the third and final step builds logically again on the preceding allocating step in that it uses the previously determined clock rate. In this sense, all subsequent steps technically depend on the previous ones. Thus, it is not possible to ignore the allocating step or any of the others when assessing the presence of an inventive step. Otherwise, an individual feature would be randomly excised from the whole mutual relationship and the entire technical effect of the claimed subject matter would collapse. It is generally possible for all inventions to offer a solution to a technical problem by listing a number of mutually dependent features, each representing a necessary intermediate step, which when combined produce the desired overall effect. In this case, all features within the functional chain must be considered indispensable when assessing the presence of an inventive step. These functional chains can also be combined to form functional trees. By using functional chains of technically dependent technical features in the claim, it is possible to ensure that all of these features have to be considered as technical. In this case, it is not possible to disclaim that individual features make a technical contribution to solving the technical problem. If a claim is based on such a functional chain, there is no basis for applying the Comvik approach and all the features of the claim need to be considered when examining the inventive-step requirement. Therefore, in drafting patent applications, a functional chain for the identified technical problem should be set up and used in claiming a computer-implemented invention. Nevertheless, the inclusion of functional chains in claims is also advantageous in the case of conventional inventions. However, what if the aforementioned method read as follows? Method for operating a microprocessor comprising the following steps: determining a temperature of the microprocessor; determining a temperature of a power supply device; allocating a clock rate to the temperature of the microprocessor and operating the microprocessor at the allocated clock rate. In this case, the uncoupled and unlinked feature of ‘determining a temperature of a power supply device’ does not contribute to preventing overheating and subsequent breakdown of the microprocessor. Although at first glance this step seems a technical feature when applying the any criterion, it is a clear non-technical feature when using the context criterion. Since all features could in principle be technical features according to the any criterion, the only reliable and valid criterion to determine whether a feature is a technical one is if it contributes to the self-chosen, non-arbitrary technical problem. Only if this is the case may the feature be considered a technical one. According to the context criterion, the unlinked step of determining the temperature of the power supply device is therefore a non-technical feature. The Yin and Yang of the claim and the problem Using the context criterion, it becomes evident that the claim and the problem are closely tied and mutually dependent on each other. Claims should only comprise features that are essential for solving the problem underlying the invention. In turn, the problem should be defined and formulated so that it can be classified as a technical problem and is concrete enough to determine whether a given feature from the claim contributes to it. A claim cannot be read and assessed without knowing the problem, and a solution to a problem cannot be assessed without knowing the claim. Thus, the particular claim as well as the problem are both necessary for assessing patentability of the invention, ie the technical teaching. Patent applications that do not contain claims cannot be examined since it is not possible to determine what subject matter would be protected. In the same way, patent applications that do not define a problem cannot be examined since it is not possible using the context criterion to determine which features technically contribute to its solution. However, in patent applications, it is admissible to revise the technical problem within certain limits.18 18 See n 7, H-V, 2.4 Depending on the chosen problem, different features are to be considered for examining the invention in granting procedures. For example, a claim could incorporate four features (A), (B), (C) and (D). Then it may happen that for non-arbitrary problem, (i) only features (A), (B) and (C) contribute technically, while feature (D) does not. In this case, feature (D) is a non-technical feature, eg a decorative nail. However, it can also occur that for revised non-arbitrary problem, (ii) only features (A), (B) and (D) contribute technically, while feature (C) does not. In this case, feature (C) is a non-technical feature unused for the concrete solution. This again demonstrates that technicality is a relative property with respect to the problem. Consequently, patent applications that fail to define a problem cannot be examined as a matter of principle. When applying the context criterion, examining patent applications and searching prior art are drastically simplified since only features relevant for solving must be considered. Once the problem is defined, all claimed features that do not contribute technically can be omitted from the examination and search. Conclusion In patent claims, there must be a distinction between non-features and features. While non-features do not influence the design of the claimed subject matter, features cause a substantive adaptation. Non-features cannot cause a technical effect as a pure matter of logic. In contrast, every feature could cause a technical effect as a matter of principle provided that a suitable invention context is given. Thus, every feature could be a technical feature. Consequently, features cannot be classified per se as technical or non-technical in an absolute manner. Thus, the any criterion set out by the Comvik decision in an attempt to define an absolute measure for determining technicality is wrong. Instead, when assessing technicality, it must be determined whether a feature contributes to the solution of the concrete, non-arbitrary problem to be solved by the specific invention. If this is the case, the feature is a technical one. If there is no contribution to solving this concrete problem, it is to be seen as a non-technical feature. This gives a relative measure for determining the technicality of features that depends on the specific non-arbitrary problem to be solved. Using this approach, it turns out that reputed technical features are in fact non-technical. For example, a nail in one invention context is a technical feature when it serves as a fastening means and contributes for solving the technical problem. In contrast, a nail is a non-technical feature in another invention context when it serves as decoration. This implies that features can gain or lose their technicality depending on the problem to be solved. The problem and the corresponding claim are to be seen as a dualism to matters that are fully complementary, interconnected and interdependent. By using the context criterion, reliable results for technicality are gained so that the examination of patent applications can focus on solely technically relevant features. This should lead to a drastic reduction in complexity and contribute to expedited examination and search in granting procedures. © The Author(s) 2020. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/open_access/funder_policies/chorus/standard_publication_model)
TI - Wonders of technicality: technical features, technical problems, functional chains and a review of the Comvik approach
JF - Journal of Intellectual Property Law & Practice
DO - 10.1093/jiplp/jpaa012
DA - 2020-03-01
UR - https://www.deepdyve.com/lp/oxford-university-press/wonders-of-technicality-technical-features-technical-problems-aWQokZ4DNL
DP - DeepDyve
ER -