This is one of the landmark decisions when it comes to the patentability of software. The EPO Board of Appeal established that inventive step can only be based on technical features.
On the merits, the European Patent Office revoked a software patent for a multi-identity SIM card with the decision T 0641/00 (Two identities/COMVIK) of 26.9.2002 of Technical Board of Appeal 3.5.01. Here are the practical takeaways from the decision:
Key takeaways
Headnote I: “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.”
Headnote II: “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.”
The invention
The invention relates to digital mobile telephone systems and in particular to the use of a single-user multi-identity IC card as subscriber identity module in a mobile unit of a GSM-type system.
The patent application was granted in 1997. A few months later, oppositions were filed. The opposition division revoked the patent in 2000. Shortly after that, the appellant filed an appeal against the decision. The Board of appeal dismissed the appeal in 2002 so that the patent was finally revoked.
The scope of the invention can be easily understood from claim 1 and Figure 1. The object of the invention is to enable a more flexible use of subscriptions and subscriber identity modules.
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Claim 1 (Main request)
Is it patentable?
First of all, the Board confirmed that patent claims may well contain a mix of technical and non-technical features:
On this approach it is legitimate to have a mix of technical and “non-technical” features (i.e. features relating to non- inventions within the meaning of Article 52(2) EPC) appearing in a claim, even if the non-technical features should form a dominating part. Thus in T 26/86 X-ray apparatus/KOCH& STERZEL, (OJ EPO 1988, 19) a mix of technical and non-technical features was considered as a matter of principle to be patentable even if the technical was not the dominating part of the invention. As reasoned by the Board, “the teaching (might, otherwise, be made) unpatentable in its entirety if the greater part is non-technical and even though the technical aspect which is found to be subordinate is in fact judged to be novel and to involve inventive step” (see paragraph 3.4 of the decision). It follows that the Board, although allowing a mix of technical and non-technical features to be claimed, considered the technical part of the invention as the basis for assessing inventive step.
Moreover, the Board held that the non-technical features of a patent claim cannot take part in the inventive step assessment:
Further, where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step.
Applying these principles to the case at hand, the Board identified three features in claim 1 that distinguished over the closest prior art, namely (i) the subscriber identity module is allocated at least two identities, (ii) said at least two identities being selectively usable, and (iii) the selective activation being used for distributing the costs for service and private calls or among different users.
However, according to the Board, these features did not solve a technical problem:
Distributing costs according to specific schemes (features (ii) and (iii)), however, is not disclosed as a technical function of the system: it is left to the user to decide and to select the desired identity and to the network operator to use the additional identity data in one or other way. The inconveniences to be eliminated are actually not located in any technical aspects of the network system, distributing costs according to the claimed kind of cost attributing scheme is rather a financial and administrative concept which as such does not require the exercise of any technical skills and competence and does not, on the administrative level, involve any solutions to a technical problem. Technical aspects first come into play with the implementation of such a scheme on the GSM system. In other words, the claimed concept of selectively distributing the costs for service and private calls or among different users does as such not make a contribution to the technical character of the invention.
Therefore, the Board ultimately decided that the patent application does not provide any technical contribution that could be the basis for an inventive step.
More information
You can read the whole decision here: T 0641/00 (Two identities/COMVIK) of 26.9.2002