The revised version of the EPO Guidelines for 2016 have recently been published on the EPO website in html format.2 They will enter into force on November 1st, 2016.
This edition includes revisions to the parts of the Guidelines related to computer implemented inventions (CII), including a comprehensive review of eligibility of CIIs. These parts have been discussed with the epi (European Patent Institute), in particular with the CII subcommittee of the European Patent Practice Committee (EPPC).
The changes appear mainly in Parts F-IV, G-VII of the EPC Guidelines (PCT Guidelines are available as well) and introduce guidance on clarity and several examples of eligible/non-eligible, patentable/ non-patentable subject matter in CII, with a complete problem-and-solution reasoning approach with respect to example prior art.
Specifically, in section 3.9 of F-IV relating to clarity, a fundamental distinction is made between:
1. inventions in which all the method steps can be carried out by generic data processing means; and
2. inventions in which at least one method step requires the use of specific data processing means or other technical devices as essential features.
In case #1, the traditional types of claim are allowed, i.e. method, apparatus/device/system, computer program [product], computerreadable [storage] medium/data carrier. In this regard, it is to be noted that:
− the signal-type claim doesn’t appear any longer, which is a major drawback in this edition;
− it is clearly specified that “[t]here is no particular preference of wording among ‘comprising means for’, ‘adapted to’, ‘configured to’ or equivalents,” which is a major improvement of this edition since the practice among examiners was not uniform in the past.
Other clarity issues are dealt with in this section, such as defining correctly which steps are carried out by a user if user interaction is required, defining specific features of different entities in a distributed computing environment and how they interact (and in this case further independent claims to interrelated products and their corresponding methods may also be allowable), and allowability of computer-implemented data structure claim type (yes).
Case #2 deals with the situation of applied fields such as medical devices, measuring, optics, electro-mechanics or industrial production processes, where method claims frequently involve steps of manipulating or interacting with technical physical entities using computer control.
In this situation, after the main method claim, specific claim(s) directed to the particular essential technical means should be included. Moreover, when drafting the computer program [product] claim, it is not possible to refer to the method claim only, because such a claim cannot be executed by a computer alone. Therefore, reference to both the particular technical means claim and the method claim should be made, such as:
3. A computer program [product] comprising instructions to cause the device of claim 2 to execute the steps of the method of claim 1.3
In section 5.4 of G-VII, patentability assessment of claims comprising technical and non-technical features is dealt with. This is often the case of CII claims, therefore several examples in this field have been provided.
As in the current practice, a mixture of technical and non-technical features is legitimate and the non-technical features may even form a major part of the claimed subject-matter. However, the presence of an inventive step under Art. 56 requires a non-obvious technical solution to a technical problem.4
The steps an Examiner should perform in the patentability assessment were already present in the 2015 release. These steps have been explicitly worked out in examples adapted from:
- Decisions T 1670/07 and T 279/05 – “Method of facilitating shopping on a mobile device” (obvious) which also shows the typical application of the approach developed in T 641/00 (COMVIK). Non-technical modifications to the business concept are given to the skilled person as a constraint to be met only.5
- Decision T 696/06 – “A computer-implemented method for brokering offers and demands in the field of transporting freight” (obvious). This example illustrates an argumentation in which it was possible to determine from the very beginning all the features which contribute to the technical character of the invention and all those which do not. This line of argumentation pertains more to the field of computerimplemented business methods and might be less suitable in other fields.6
- Decision T 102/08 – “A system for the transmission of a broadcast media channel to a remote client over a data connection” (obvious). This example illustrates a claim which involves a complex mix of technical and non-technical features. If all features appear to be technical on a prima facie basis, the Examiner should do a detailed analysis of the technical character in comparison with the closest prior art, what could reveal that one or more features are not technical but commercial. In this case, the commercial purpose should be incorporated in the formulation of the objective technical problem, as in T 641/00.7
- Decision T 1227/05 – “A computer-implemented method for the numerical simulation of the performance of an electronic circuit subject to 1/f noise” (inventive). This example illustrates the situation wherein features which, when taken in isolation, are non-technical, but do, in the context of the claimed invention, contribute to producing a technical effect serving a technical purpose. It is to be noted that if the claim were not limited to the numerical simulation of an electronic circuit subject to 1/f noise, the mathematical algorithm would not serve any technical purpose and would thus not be considered to contribute to the technical character of the claim.8
Thanks to these examples and changes, the EPO Examiners will have further guidance on how to assess eligibility and patentability of computer-implemented inventions. Such guidance doesn’t seem to change the assessment process but clarifies many issues in the light of case law. This will also help patent attorneys in their patent application drafting and prosecution and it’s likely to result in a streamlined approach to discussion with the Examiners.
1Andrea Perronace practices in the Rome office of Barzanò & Zanardo. Andrea has a degree in
Computational Physics and a Ph.D. in Physical Chemistry. Andrea is an Italian Patent Attorney and
European Patent Attorney and is admitted before the EUIPO - European Union Intellectual Property
Office of Alicante (Design) and the Republic of San Marino Patent and Trademark Office. Andrea is
a former external expert for the European Commission in the field of Anti-Counterfeiting and has
been admitted as Court Expert before the Specialized Intellectual Property Section of the Court of
Rome. Andrea is a full member of the European Patent Practice Committee (epi).
3Id., part F, chap. IV, § 3.9.2.
4Id., part G, chap. VII, § 5.4 (citing Board of Appeal decisions T 641/00, T 1784/06).
5Id., part G, chap VII, § 18.104.22.168.
6Id., part G, chap VII, § 22.214.171.124.
7Id., part G, chap VII, § 126.96.36.199.
8Id., part G, chap VII, § 188.8.131.52.