## Facts

- A European patent (EP 0 579 655) claimed a method in a GSM mobile system using a SIM (IC) card allocated at least two subscriber identities, with only one active at a time and selectable by the user.
- The asserted benefit was flexible management of multiple subscriptions and related billing/cost allocation using a single SIM.
- Opponents filed oppositions alleging lack of novelty and inventive step based on prior art disclosing conventional GSM systems and known multi-identity cards.
- The Opposition Division revoked the patent for lack of inventive step, reasoning that implementing known multi-identity cards in a GSM context was obvious.
- The proprietor appealed, defending amended claim sets and arguing that the claimed multi-identity SIM concept solved technical problems within GSM infrastructure.

## Issues

1. How should inventive step be assessed where claims combine technical features with non-technical (business/administrative) features?
2. To what extent may non-technical aims appear in the objective technical problem under the problem-solution approach?
3. Whether the claimed multi-identity SIM method involved an inventive step over the closest prior art GSM system disclosures.

## Decision

- The Board dismissed the appeal and upheld revocation for lack of inventive step.
- The Board held that, for mixed inventions with technical character overall, inventive step is assessed using only those claim features that contribute to technical character; features that do not contribute cannot support inventive step.
- The Board held that a non-technical aim stated in the claim may appear in the objective technical problem as a constraint, without thereby contributing to inventive step.
- Applying this approach, the Board treated the multiple-subscription and billing/cost-allocation concept as non-technical constraints and found the remaining technical implementation in GSM/SIM architecture obvious in view of the prior art and common technical knowledge.

## Legal Principles

- A claim mixing technical and non-technical features can have technical character as a whole and is not excluded merely for containing non-technical aspects.
- In the inventive-step analysis, only features contributing to technical character (i.e., producing a technical effect in solving a technical problem) are considered; non-technical features cannot establish inventive step.
- Non-technical requirements (such as business or administrative rules) may be used to formulate the objective technical problem as constraints given to the skilled person.
- Under the problem-solution approach, once the non-technical constraints are set, the question is whether the remaining technical measures for implementing them would have been obvious to the skilled person.

## Conclusion

The Board confirmed that inventive step for mixed claims turns on the non-obvious technical contribution: business or administrative concepts may frame the problem as constraints but do not themselves supply inventiveness, and here the GSM/SIM implementation was held obvious, so the patent remained revoked.


COMVIK GSM AB v. DeTeMobil Deutsche Telekom MobilNet GmbH (T 641/00), 2003 O.J. E.P.O. 352 (Tech. Bd. App. 3.5.1 2002)