Tuesday, 13 October 2009

T 756/06 - How to Deal with Hybrids

The claims relate to a display apparatus having a mixture of technical aspects, e.g. automatically calculating a second time scale, and non-technical aspects, e.g. presenting schedule information. It is established jurisprudence that such claims are inventions in the sense of A 52(1)(2), but that the non-technical features cannot support the presence of inventive step (A 56). Technical features are generally considered to be those that produce a technical effect. [4]

In practice in such cases, one of two approaches is generally followed.

In the first approach, e.g. apparent from T 931/95, there is an initial analysis of the technical character of the features of the claim and then a consideration of the inventive step of only those features. This approach is typically used for inventions that are essentially business methods running on more or less notoriously known computer hardware.

The second approach, e.g. used in T 641/00 (Comvik), is a more conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that contribute to the technical character are considered for inventive step. This approach may be more appropriate where the technical part is more substantial and/or relevant prior art exists. It has the advantage that any non-technical feature known from this prior art will not appear as a difference and does not need to be considered in the subsequent steps, thus sparing the step of judging whether it makes a technical contribution. Furthermore, this approach is less abstract since the claimed features can be analysed against concrete prior art. [5]

To read the whole decision, click here.