05.12.2025
A recent Board of Appeal decision upheld the COMVIK test as the gold standard to determining whether computer-implemented methods are technical or not, and assessing inventive step.
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Patent attorneys often talk to inventors about subject matter "being technical", "solving a technical problem", or "having a technical effect". However, these are not just the same idea, rephrased.
Particularly for software applicants trying to patent software methods in “non-technical” fields, it can be difficult to know whether your patent application will fall foul of the EPO’s approach in this space. A recent Board of Appeal decision may offer some reassurance and certainty – it upheld the COMVIK test as the gold standard to determining whether computer-implemented methods are technical or not, and assessing inventive step.
The application (EP17851913.8) relates to “a method performed by a data processing apparatus”. Claim 1 of the Main Request included steps of receiving a portion of metadata describing nodes and edges. Each node represents a metadata object, which can be a data element or a transformation. An edge represents a one-way effect of one node upon another node. Claim 1 also included steps of receiving a query for lineage metadata including the identification of a data element, a type of lineage and a walk plan; traversing the data structure and collecting data using the data structure and the walk plan; generating a response including lineage metadata responsive to the query; and sending the response to a computer system and displaying the lineage data.
In the first instance, the Examining Division found that claim 1 was a non-technical, administrative method. The appellant argued that the Examining Division had applied a problem-solution approach based on hindsight, as the objective technical problem included the solution. They also argued that the assessment involved “an artificial, hypothetical separation of features that were actually claimed together”.
The Board of Appeal applied the COMVIK test, taking a different problem-solution approach to that of both the Examining Division and the appellant. The Board concluded that there was technical, patentable subject matter in the claims of the Main Request.
Some key takeaways from the decision are:
In other words, it is not only the purpose of the claim that is important for determining whether it has technical character. In this application, the claimed metadata was not necessarily technical beyond the fact that it was stored in computer memory – in fact, the description gave examples related to business terms.
However, the Board of Appeal stated that “the fact that the ultimate goal of the claimed method is not technical is not sufficient to conclude that the whole implementation is not technical”, referring to the decision of G1/19. This is in stark contrast to the conclusion reached by the Examining Division in the first instance, which referred to the non-technical purposes of the data set out in the description of the application in its rejection of the application.
The COMVIK test established in T641/00 was not applied correctly by the Examining Division in the first instance. The decision of the Board of Appeal stated that “each claim feature, or each aspect of a claim feature, is either a contribution of the non-technical expert… in which case it can appear in the formulation of the technical problem to be solved, or a contribution of the technical expert, in which case it is part of the technical solution”.
Claim 1 of the Main Request included non-technical requirements related to obtaining and displaying lineage information for a particular data element. The Board of Appeal therefore formulated the technical problem as “supporting in the system of document D2 the functionality for obtaining and displaying, in a computer system, lineage metadata of a given type for a particular element” (i.e., how to support the functionality of those non-technical requirements).
In the first instance, the Examining Division argued that "When automating the method on the computer system comprising a query processing method the computer programmer does not have to overcome any technical problem, commonplace programming skills and computer knowledge will suffice”. However, the question of whether a solution is technical or not is different to the question of whether the solution would be obvious to the technically skilled person (i.e., the computer programmer).
The purposive selection of the commonplace technical features can give rise to inventive step. Specifically, the use of pointers to reference memory locations in the data structure is commonplace, but its purposive use nevertheless makes a technical contribution. The Board ultimately found that the skilled person would not arrive at the combination of all the distinguishing features.
The full decision can be read here: T 2353/22 (Lineage metadata/AB INITIO) 10-10-2024 | epo.org
If you would like more information on this topic, please reach out to Sinead, or to your usual Keltie contact.
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