In our February 2002 Newsletter, we noted the decision of an EPO Appeal Board in the Pension Benefits case where it was held that, where the improvement achieved by the programming of a computer was an essentially economic one, one could not rely on that improvement to assert that the invention possessed an inventive step because, from the point of view of the technical personnel involved, the software developer or the application programmer, there was no technical problem to solve. This decision has now been applied in a case going beyond the simple question of programming a computer to carry out financial calculations.


It was agreed that the prior art did not show use of an SIM with at least two identities, selective use of identities or the use of selected activation of identities to distribute costs between different users.

The Board summarized the law as it saw it as being that “[f]or the purpose of the problem and solution approach the problem must be a technical problem, it must actually be solved by the solution claimed” and that “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 assessing inventive step.” It therefore concluded that in the present case “the claimed concept of selectively distributing the costs...among different users does as such not make a contribution to the technical character of the invention.” This being the case, one needs to look to see how the skilled person in telecommunication systems would solve the task of implementing a mobile phone system “in such a way as to allow user-selectable discrimination between calls . . . by different users.” Since any such discrimination requires allocation of different identities, it was obvious that one should provide a card providing the necessary commands for selecting the desired identity. Therefore, “in so far as it has technical character” it was obvious.