Technical effect

The technical effect is the concrete result, of a technical nature, produced by the features of an invention. The concept is defined neither by the European Patent Convention nor by the French Intellectual Property Code, but it runs through the whole of patent law, from the characterisation of an invention to the assessment of inventive step and sufficiency of disclosure. It has been developed mainly by the case law of the Boards of Appeal of the European Patent Office (EPO).

Technical effect and inventive step

Under the problem-solution approach, the objective technical problem is derived from the technical effect produced by the features distinguishing the invention from the closest prior art. An effect that is alleged but not demonstrated cannot be taken into account, and the problem is then reformulated less ambitiously, often as the mere provision of an alternative. The Enlarged Board of Appeal has made clear that the proprietor may rely on a technical effect, if need be established by post-published evidence, provided that the person skilled in the art, having regard to the common general knowledge and the application as filed, would have understood it as encompassed by the technical teaching of the invention.

Technical effect and technical character

The technical effect also serves to establish the technical character of the invention. For computer-implemented inventions, the case law requires a further technical effect going beyond the normal physical interactions between a program and the computer on which it runs. For mixed inventions, only features that contribute to technical character by producing a technical effect are taken into account in assessing inventive step. Non-technical features, whether commercial, aesthetic or administrative, cannot support inventive step.

Technical effect in chemistry and pharmaceuticals

In chemistry, a selection invention and a combination invention in principle require a particular effect, which justifies the selection made or the interaction of the combined elements. For a therapeutic application, the claimed effect must be made credible by the application as filed, failing which the invention is insufficiently disclosed. The debate on plausibility, long fuelled by divergent solutions, has been clarified by the Enlarged Board, which tied it to the content of the application as originally filed.

Key points

The technical effect is the key to inventive step before the EPO, and demonstrating it often determines whether the patent survives. It must be set out, or at least made understandable, in the application as filed, since later tests can only confirm it. When drafting, the desired effects and the results obtained should be described precisely, and in litigation it should be checked whether the effect relied on by the other side has a basis in the original application.

---

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

Patent litigation · Unified Patent Court · UPC case law · Tell us about your situation