III. COMVIK Approach
A computer implemented invention claim usually has at least one technical feature (to be considered an “invention” under Article 52(1) EPC) and non-technical features from the list of non-inventions under Article 52(2) EPC, e.g. features relating to “programs for computers”. This means that there is usually a mixture of technical and non-technical features in a computer implemented invention claim. The COMVIK approach – discussed in the following chapter – is now used to determine which features in such a computer implemented invention claim can contribute to inventive step. This chapter is based on the Enlarged Board of Appeal decision G1/19, points 30 to 34.
Summarized jurisprudence of the boards of appeal regarding subject-matter excluded from patentability
Decision T 154/04 – please see ANNEX II – summarised the jurisprudence of the boards of appeal on the application of Articles 52, 54 and 56 EPC in the context of subject-matter and activities excluded from patentability under Article 52(2) EPC in the following principles (T 154/04, Estimating sales activity/ DUNS LICENSING ASSOCIATES, Reasons, point 5):
(A) Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an invention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.
(B) Having technical character is an implicit requisite of an “invention” within the meaning of Article 52(1) EPC (requirement of “technicality”).
(C) Article 52(2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded “as such” (Article 52(3) EPC).
(D) The four requirements – invention, novelty, inventive step, and susceptibility of industrial application – are essentially separate and independent criteria of patentability, which may give rise to concurrent objections. Novelty, in particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.
(E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.
(F) It is legitimate to have a mix of technical and “non-technical” features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features “as such”, do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.
(G) For the purpose of the problem-and-solution approach, the problem must be a technical problem, which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention).
Different types of features
According to principle (F) above it is distinguished between:
- Technical features.
- Non-technical features: Features which, on their own, would be considered “non-inventions” under Article 52(2) EPC (whether such features contribute to the technical character of the invention has to be assessed in the context of the invention as a whole). This definition is from G1/19.
- Non-technical features “as such”: (In addition to the definition re non-technical features mentioned before) they do not interact with the technical subject matter of the claim for solving a technical problem. And/or, they do not provide a technical contribution to the prior art, see T 154/04 above.
Principles (F) and (G) above were established in the COMVIK-decision
The Headnote of the COMVIK-decision (T 641/00) reads as follows:
- 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.
- 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.
In other words, according to principle 1 all features of the claim (both technical and non-technical features) which contribute to the technical character of the invention are considered for inventive step.
Further explanations to principle 2 are given in the discussion of the decision T 154/04, see ANNEX II.
The principles set out in the principles 1 and 2 above for dealing with non-technical features in the assessment of inventive step for computer-implemented inventions will be referred to in the following as the “COMVIK approach”.
What is the technical character?
Above, the term technical character has appeared in T 154/04 and in the Basic Proposal for the Revision of the EPC. In summary, the following definitions are used for the term technical character in G1/19:
- an implicit requisite of an “invention” within the meaning of Article 52(1) EPC,
- a requirement of “technicality”,
- a “technical teaching”, i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means.
More about features
Features which can be considered to be technical per se do not necessarily contribute to the technical solution of a technical problem. An invention may have
(i) technical features which contribute,
(ii) technical features which do not contribute,
(iii) non-technical features which contribute and
(iv) non-technical features which do not contribute (non-technical features “as such”)
to the technical solution of a technical problem and thereby potentially to the presence or not of an inventive step.
While (i) and (iv) are self-evident, features according to (iii) have been established by the case law described above (principle (F): non-technical features interacting with the technical subject matter of the claim for solving a technical problem).
Case (ii) occurs if features that per se qualify as technical cannot contribute to inventive activity because they have no technical function within the context of the claimed invention, see e.g. below T 619/02 (OJ EPO 2007, 63, Reasons, points 2.2, 2.6.2) concerning perfumes.
Example:
The T619/02 is in regard to a claimed odour selection method in which the resulting odour has not been properly processed or transformed, but merely selected from among a series of existent odours. These features are not excluded by Art. 52(2) and (3) EPC. Nevertheless, the claimed method relies on no more than the perceptional assessment of odours and stimuli for the purpose of evaluating their aesthetic evocation attributes. Since beyond a purely perceptual evocative inducing effect no technical information, i.e. no technical quality or technical significance can be attributed to the selected odour, the result of the claimed method constitutes a non-technical selection. Accordingly, no technical effect is achieved by the claimed method.
In other words, in the mentioned example, the claim features seem at first glance to be excluded according to the non-invention list of Art. 52(2) EPC. However, in the view of the Board, none of the claimed features in the mentioned example is mentioned in this list. Therefore, the features are considered to be technical features. Nevertheless, the technical features have no technical effect and therefore are technical features according to (ii) above which are not considered regarding inventive step.
Even before the COMVIK approach was established, technically non-functional modifications (even if they could per se be considered technical) could be considered irrelevant in the assessment of inventive step (see T 72/95, Reasons, point 5.4).
Why was the COMVIK approach developed?
The COMVIK approach was developed as a means of applying the problem-solution approach to computer-implemented inventions that encompass non-technical features (see principle (F) mentioned above). Subsequent cases noted that the COMVIK approach does not contradict the problem-solution approach; rather, it is a special application of the problem-solution approach to inventions that contain a mix of technical and non-technical features (T 1503/12, Reasons, point 3.3).
Illustration of the COMVIK approach
A summary of the COMVIK approach is illustrated in the figure below:
- The blue block (1) in the figure shows a CII claim having technical features and non-technical features. Technical features are e.g. the feature “computer implemented” (please see chapter II “any hardware approach”) and/or “functional data” (please see chapter IV “Potential technical effects”) and/or other technical features.
- Non-technical features are disclosed in the list of Art. 52(2) EPC, marked with (2), e.g. features regarding “programs for computers”.
- According to the COMVIK approach, non-technical features can contribute to the technical character. For this, they have to interact with the technical subject matter of the claim (a technical subject-matter may consist, at least in part, of non-claimed technical features, please see Chapters VIII and IX). This is represented by the two arrows (3) which meet in the conical flask (in which a chemical reaction takes place).
- These non-technical features and the technical features then give technical teaching considered for inventive step, see mark (4) in the figure.
- If the non-technical features do not interact with the technical subject matter, then they are considered to be “non-technical features as such” and they are not taken into account in the inventive step.
Example regarding the application of the COMVIK approach
The following example for the COMVIK approach is based on the “Guidelines for Examination of the EPO” G-VII-5.4.2.5.
Claim 1:
A method for coating a workpiece using a thermal spray coating process, the method comprising:
(a) applying, using a spray jet, a material to the workpiece by thermal spray coating;
(b) monitoring the thermal spray coating process in real time by detecting properties of particles in the spray jet and supplying the properties as actual values;
(c) comparing the actual values with target values;
and, in the event that the actual values deviate from the target values,
(d) adjusting process parameters for the thermal spray coating process automatically by a controller on the basis of a neural network, said controller being a neuro-fuzzy controller which combines a neural-network and fuzzy logic rules and thereby maps statistical relationships between input variables and output variables of the neuro-fuzzy controller.
Background: The invention relates to the control of an industrial process, i.e. thermal spray coating of a workpiece. The material used for the coating is injected with the help of a carrier gas into the high-temperature jet, where it is accelerated and/or molten. The properties of the resulting coatings are subject to great fluctuations, even with seemingly constant parameters of the coating operation. The spray jet is monitored visually with a CCD camera. The image picked up by the camera is sent to an image processing system, from which the properties of particles in the spray jet (e.g. velocity, temperature, size, etc) can be derived. A neuro-fuzzy controller is a mathematical algorithm which combines a neural network with fuzzy-logic rules.
Application of the steps of the problem-solution approach according to COMVIK:
Step (i): The method is directed at thermal spray coating, i.e. a specific technical process, comprising various concrete technical features, e.g. particles, workpiece, a spray coating device (implicit).
Step (ii): Document D1 discloses a method for the control of a thermal spray coating process by applying material to a workpiece using a spray jet, detecting deviations in the properties of the particles in said spray jet and adjusting process parameters automatically on the basis of the outcome of a neural network analysis. This document represents the closest prior art.
Step (iii): The difference between the method of claim 1 and D1 concerns the use of a neuro-fuzzy controller combining a neural network and fuzzy logic rules as specified in the second part of step (d).
Computational models and algorithms related to artificial intelligence are, on their own, of an abstract mathematical nature. The feature of combining results of a neural network analysis and fuzzy logic defines a mathematical method when taken on its own. However, together with the feature of adjusting the process parameters, it contributes to the control of the coating process. Hence, the output of the mathematical method is directly used in the control of a specific technical process.
Control of a specific technical process is a technical application. In conclusion, the differentiating feature contributes to producing a technical effect serving a technical purpose and thereby contributes to the technical character of the invention. Therefore, it is taken into account in the assessment of inventive step.
Defining the object of the invention using aim of non-technical features as such (COMVIK decision Headnote No. 2)
In the previous chapters we discussed Headnote 1 of COMVIK T 641/00 regarding mixed inventions having technical and non-technical features. Below you will find information about Headnote 2 (which you will find above) of COMVIK T 641/00. Headnote 2 deals with the formulation of the subject-matter of mixed-type inventions. Below you will find explanations based on decision T 154/04 Estimation of sales activity/DUNS LICENSING ASSOCIATES, reasons point 16:
For the purpose of the problem-and-solution approach developed as a test for whether an invention meets the requirement of inventive step, the problem must be a technical problem (see the COMVIK decision T 641/00 (supra), Reasons Nos. 5 ff.). The definition of the technical problem, however, is difficult if the actual novel and creative concept making up the core of the claimed invention resides in the realm outside any technological field, as it is frequently the case with computer-implemented inventions. Defining the problem without referring to this non-technical part of the invention, if at all possible, will generally result either in an unintelligible vestigial definition, or in an contrived statement that does not adequately reflect the real technical contribution provided to the prior art.
The Board, therefore, allowed in COMVIK an aim to be achieved in a non-technical field to 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 is to be met (Reasons No. 7). Such a formulation has the additional, desirable effect that the non-technical aspects of the claimed invention, which generally relate to nonpatentable desiderata, ideas and concepts and belong to the phase preceding any invention, are automatically cut out of the assessment of inventive step and cannot be mistaken for technical features positively contributing to inventive step. Since only technical features and aspects of the claimed invention should be taken into account in assessing inventive step, i.e. the innovation must be on the technical side, not in a non-patentable field (see also decisions T 531/03 – Discount certificates/CATALINA (not published in OJ EPO) Reasons Nos. 2 ff., and T 619/02 (supra), Reasons No. 4.2.2), it is irrelevant whether such a non-technical aim was known before the priority date of the application, or not.
Example re defining the object of the invention using aim of non-technical features as such (COMVIK decision Headnote No. 2)
The following example for the COMVIK approach is based on the “Guidelines for Examination of the EPO” G-VII-5.4.2.3.
Claim 1:
A system for the transmission of a broadcast media channel to a remote client over a data connection, said system including:
(a) means for storing an identifier of the remote client and an indication of an available data rate of the data connection to the remote client, said available data rate being lower than the maximum data rate for the data connection to the remote client;
(b) means for determining a rate at which data is to be transmitted based on the indication of the available data rate of the data connection; and
(c) means for transmitting data at the determined rate to said remote client.
Document D1, which discloses in the figure below a system for broadcasting video over an xDSL connection to the set-top boxes of subscribers, is selected as the closest prior art. The system comprises a database storing identifiers of subscribers’ computers and, in association with them, an indication of the maximum data rate for the data connection to each subscriber’s computer. The system further comprises means for transmitting the video to a subscriber’s computer at the maximum data rate stored for said computer.
The differences between the subject-matter of claim 1 and D1 are:
(1) Storing an indication of an available data rate of the data connection to the remote client, said available data rate being lower than the maximum data rate for the data connection to the remote client.
(2) Using said available data rate to determine the rate at which the data is transmitted to the remote client (instead of transmitting the data at the maximum data rate stored for said remote client as in D1).
The purpose served by using an “available data rate” which is lower than a maximum data rate for the data connection to the remote client is not apparent from the claim. Therefore, the relevant disclosure in the description is taken into account. In the description, it is explained that a pricing model is provided which allows a customer to choose from several service levels, each service level corresponding to an available data-rate option having a different price. A user may select an available data rate lower than the maximum data rate possible with the connection in order to pay less. Hence, using an available data rate which is lower than the maximum data rate for the connection to the remote client addresses the aim of allowing a customer to choose a data-rate service level according to that pricing model. This is not a technical aim, but an aim of a financial, administrative or commercial nature and thus falls under the exclusion of schemes, rules and methods for doing business in Art. 52(2)(c). It may thus be included in the formulation of the objective technical problem as a constraint to be met.
The features of storing the available data rate and of using it to determine the rate at which the data is transmitted have the technical effect of implementing this non-technical aim.
The objective technical problem is therefore formulated as how to implement in the system of D1 a pricing model which allows the customer to choose a data-rate service level.
