T 0154/04 - Non-technical features do not contribute to novelty or inventive step - #86

Rank: 86
No. of citations: 59

This decision, T 154/04, developed a system of how to deal with a mix of technical and non-technical features in claims defining a computer-implemented invention. It has been cited at a relatively high frequency as of its publication in 2017.

In brief, T 154/04 held that the non-technical features in mixed-type computer-implemented invention claims cannot contribute to novelty or inventive step. Under point 15 of the reasons, the Board put it like this:

"15. From this distinction between the technical features and non-technical features ("merely mental in nature" in the citation above), it must be inferred that non-technical features to the extent that they do not interact with technical features to produce a technical effect cannot establish novelty or inventive step (see also the decisions cited in "Case Law of the Boards of Appeal of the European Patent Office", fifth edition, December 2006, European Patent Office 2006, chapter I.D.8.4).[...]"

Regarding the validity of the findings in T 154/04, the Enlarged Board of Appeals in G 8/03 stated under point 10.13.1 of the reasons:

"While it is not the task of the Enlarged Board in this Opinion to judge whether [the system of T 154/04] is correct, since none of the questions put relate directly to its use, it is evident from its frequent use in decisions of the Boards of Appeal that the list of "non-inventions" in Article 52(2) EPC can play a very important role in determining whether claimed subject-matter is inventive."

T 154/04 thus contributed significantly to developing the system under which the EPO nowadays deals with claims including a mix of technical and non-technical features, as set out in the current EPO Guidelines at G‑VII, 5.4.

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Headnote:

I. Methods of business research are excluded "as such" from patentability under Article 52(2)(c) and (3) EPC.
II. Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem.

The full text of the decision can be found here.