Decision G 1/19 and the Messy Misconception of the COMVIK Approach

Abstract

Abstract Decision G 1/19 of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) answers the question whether computer simulations can be protected under the EPC. It was decided that these simulations in principle could solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer. The result of the decision is rather non-spectacular and obvious, since it simply states that simulations can be protected under EPC law when they solve a technical problem. Nevertheless, the decision casts an extensive light on the general and established criteria to be used for assessing technicality. In this context a misconception of the COMVIK approach becomes apparent. The COMVIK approach is based on distinguishing technical from non-technical features. All technical features must be considered when assessing inventive step of an invention over prior art, while non-technical features have no significance for this purpose. In this view it is assumed that all information provided by a claim can be either classified as a technical or a non-technical feature. Further it is assumed that features exist that are inherently technical, i.e. technical per se. However, this concept of an inherent technical character is misleading. Basically, all information should first be distinguished as to whether it has a substantial effect on the design of the claimed subject-matter. Information that does not influence its ‘appearance’ must be seen a ‘non-feature’, whereas all other information describing a characteristic of the claimed subject-matter forms a ‘feature’. Secondly the so determined features are to be divided into technical or non-technical features, solely depending on whether they contribute to the solution of the concrete technical problem of the invention. In this way, the non-feature concept avoids many classification problems associated with the former COMVIK approach and constitutes the only admissible way to assess technicality correctly, consistently and non-sophistically.