CABINET CHAILLOT

European patent problem-solution approach in the decision T 641/00

In a decision G 1/03 - G 2/03 dated September 26, 2002, a Board of Appeal of the EPO has underlined the compulsory technical aspect of an invention, not only in the object of the patent, but in the appreciation of obviousness.

In a decision G 1/03 - G 2/03 dated September 26, 2002, a Board of Appeal of the EPO has underlined the compulsory technical aspect of an invention, not only in the object of the patent, but in the appreciation of obviousness.European patent n° T 323/97 relates to digital mobile telephone systems and, in particular, to the use of a single-user multi-identity IC card as subscriber identity module, allowing the use of a telephone by a person under two different identities, thus distinguishing private and service phone calls.The patent was granted and an opposition was filed, submitting new document.This new document disclosed a system where each single subscriber identity module is allocated an identity which is the basis for different identity data.Knowing this document, the novelty of the claimed invention is that :(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.The problem solved by the invention appears to be to eliminate inconveniences caused by distributing costs for service and private calls or among different users.However, such a problem is not a technical problem.Indeed, the Board of Appeal has reminded that the obviouness of an invention according to Article 56 EPC has to be put into context with remaining patentability requirements of Articles 52 to 57 EPC, i.e. the requirements of technical character.Even if it is possible to have a mix of technical and non-technical features in a claim, only the technical part of the invention is the basis for assessing inventive step.If no technical problem can be derived from the application, then an invention within the meaning of Article 52 EPC does not exist (see also G 1/93).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.For example, all administrative and commercial aspects of the network management must not be considered.In the present case, a technical problem could be defined, leaving the non-technical aspect : to implement the GSM system in such a way as to allow user-selectable discrimination between calls for different purposes or by different users.The Board of Appeal has then studied the inventive step of the invention and has determined that "the claimed invention, insofar as it has technical character, is obvious in the light of prior art" as it was obvious to allocate two identities to a single module containing already different information for one identity (a part of the information could be considered as a second identity).

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