Wonders of technicality: technical features, technical problems, functional chains and a review of the Comvik approach

Abstract

A patent is an industrial property right that protects a technical solution for a technical problem. An invention is a technical teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result.1 Patent claims legally define what technical subject matter should be protected by listing its technical features required for solving an associated technical problem. Only products that incorporate all of these features actually infringe the granted patent. Thus, patent claims are an essential part of every patent application for providing the legal infringement requirements. Actual patent claims often contain both technical and non-technical features. This is often the case in patent applications for computer-implemented inventions. In granting procedures, the European Patent Office (EPO) often disregards the non-technical features in claims when assessing the inventive step. This follows the Comvik approach2 that deals with what happens when a claim includes both technical and non-technical features. ... Currently, most people believe that a particular feature is either technical or non-technical merely by its nature.3 For example, a nail or a computer is always regarded as a technical feature, whereas a vase is seen as a non-technical feature in the form of an aesthetic creation.4 This article critically analyses the Comvik approach, sheds light on whether features can be classified as technical or non-technical and explains functional chains as a measure to overcome the Comvik approach. It offers a hands-on guide to improve the drafting of patent applications and to practically eliminate Comvik objections regarding non-technicality of features.