A key factor for the European Commission’s proposed Directive on the patentability of computer-implemented inventions1 is the requirement that a computer-implemented invention, to be patentable “must be susceptible of industrial application and new and involve an inventive step.”2 Technical contribution is a required component of an inventive step, and is defined as follows:
“technical contribution” means a contribution to the state of the art in a field of technology which is not obvious to a person skilled in the art. The technical contribution shall be assessed by consideration of the difference between the state of the art and the scope of the patent claim considered as a whole, which must comprise technical features, irrespective of whether or not these are accompanied by non-technical features.3
The requirement for “technical contribution” at the European Patent Office comes not from the European Patent Convention but from Rules 27 and 29 of the Implementing Regulations. Rule 27(1) defines that “The description shall: (a) specify the technical field to which the invention relates” whereas Rule 29(1) defines that “The claim shall define the matter for which protection is sought in terms of technical features of the invention”. It is important to recognise that all inventions are subject to these requirements regardless of the field of technology they are concerned with.
It is difficult to argue credibly that a programmed digital computer is not of the technical arts since a typical programmed digital computer consists in essence of a working storage arrangement holding data and program instructions, a central processing unit incorporating data and program instruction registers and an arithmetic (or data processing) unit, together with peripheral units such as printers, scanners etc. When a digital computer is processing (implementing) a computer program it is performing a sequence of technical operations or functions. During the time that a digital computer is executing a particular program it is dedicated to the implementation of the sequence of instructions/operations specified by the program. If the computer program in its execution causes the digital computer to perform a sequence of technical operations which are new and are not obvious to a person skilled in the art, the creator of that program should be entitled to seek patent protection for the invention as she would if the invention is in any other field of technology.
To be patentable under the EPC the applicant must establish, as mentioned above, that the invention provides an inventive technical contribution to the prior art. The application of this requirement has evolved in accordance with the decisions of the Board of Appeal at the EPO. In the computer-implemented invention field the initial decision “VICOM”4 held that a claim to subject-matter for controlling or carrying out a technical process is patentable irrespective of whether the invention is implemented by hardware or by a suitably programmed digital computer. In the second computer implemented invention case “Koch and Sterzel”5 concerning x-ray equipment designed for radiological imaging using a computer control program, the practice was confirmed. In addition the Board reviewed the German Federal Court of Justice case law and refused to follow the theory that a “teaching is not technical if in its essence it states a rule that can be carried out without employing controllable natural forces other than human brainpower, even if the use of technical means appears expedient or indeed the only sensible and hence the necessary procedure, and even if reference is made to these technical means in the claims or description."
The Board went on to say that it "is unable to share [the Fedearl Court's] view because it makes the field in which an invention essentially lies crucial to the issue of whether that invention is or is not technical in nature. The Board holds that an invention must be assessed as a whole. If it makes use of both technical and non-technical character means, the use of non-technical means does not detract from the technical character of the overall teaching. The European Patent Convention does not ask that a patentable invention be exclusively or largely of a technical nature; in other words, it does not prohibit the patenting of inventions consisting of a mix of technical and non-technical elements.”
The test for technical contribution under EPO practice is identified in the Guidelines for Examination in the EPO Section C-IV, 9.8 as the problem-and-solution approach where the problem must be an objective technical problem.6 This approach has been confirmed in the COMVIK7 and Hitachi8 decisions.
In the COMVIK decision the problem-and-solution approach “requires identification of the technical field of the invention (which will also be the field of expertise of the person skilled in the art to be considered for the purpose of assessing inventive step), the identification of the technical problem which can be regarded as solved in relation to this closest prior art, and then an assessment of whether or not the technical feature(s) which alone or together form the solution claimed, could be derived as a whole by the skilled person in that field in an obvious manner from the state of the art.
For the purposes of the problem-and-solution approach, the problem must be a technical problem, it must actually be solved by the solution claimed, all features in the claim should contribute to the solution. In this context “problem” is used merely to indicate that the skilled person is to be considered as faced with some task (German “Aufgabe”), not that its solution need necessarily involve any great difficulty.”
The COMVIK decision also considers that “(I)f no technical problem can be derived from the application, then an invention within the meaning of Article 52 EPC does not exist.”
What I think needs to be included in the definition of technical contribution is the test identified in COMVIK and Hitachi which is that the CII must solve an objective technical problem with technical means that are not obvious and the technical means that solve the technical problem are required to feature in the patent claim.
P.S. The UK Patent Office held a series of workshops earlier this year on the “technical contribution” issue and the Report on these workshops can be found at
http://www.patent.gov.uk/about/ippd/issues/eurocomp/index.htm
None of the twelve definitions used for the workshops included the problem-and-solution test discussed in this article.
1 Interinstitutional file 2002/0047(COD) – 11979/1/04 Rev 1
2 Article 3
3 Article 2(b)
4 T208/84
5 T26/86
6 Guidelines for Examination in the EPO C-IV, 9.8(ii)
7 T0641/00
8 T0258/03
