Shopping For A Technical Effect (T 1670-07)

We report on a recent Technical Board of Appeal decision at the EPO which gives us a glimpse at how arguments often used when attempting to establish an inventive step may be perceived by the Boards.

During the recent appeal against an Examining Division's decision to refuse a European patent application, the Technical Board of Appeal has clarified its position on some of the arguments often presented by applicants attempting to show that claimed inventions are technical. The Board's decision has provided some useful insight into the utility of such arguments in the form of three so-called fallacies, and also into the circumstances in which they may be deemed to be persuasive.

This decision suggests that when arguing in favour of inventive step and, more particularly, that claimed features are technical, one needs to establish a real technical effect of any novel features without relying on their interaction with other technical features, or user reaction, and one