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Wednesday, September 17, 2003

Problem-and-solution approach: treatment of non-technical aspects [EPO Decision T 641/00 - 3.5.1 "Two identities/COMVIK"]

A decision of the EPO Technical Board of Appeal 3.5.1 dated 26 September 2002 under the number

T 641/00 - 3.5.1 has been published on the EPO website today. The subject-matter thereof is related to the problem of patentability of computer-implemented inventions.

In a move which might be considered to look like hurrying obedience to the gist of the so far non-enacted

Draft Directive on the patentability of computer-implemented inventions the headnotes of the decision say that 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.

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