06/11/2018
As we previously reported, the European Patent Office’s latest Guidelines for Examination entered into force on 1 November 2018. Here, software specialists Nick Reeve, Mark Bentall and Pete Sadler take a deeper dive into the changes to the sections governing the assessment of excluded subject matter.
Applicants in the software fields sometimes find the EPO’s approach to examining computer implemented inventions (CIIs) confusing. The Guidelines for Examination can provide a helpful starting point for demystifying their methodology and determining how a given invention might be received by the EPO. Any changes to the Guidelines are therefore important to applicants in the software area. Here, we have looked at the sections that are most relevant for CIIs.
The exclusions listed by the European Patent Convention cover subject matter that are not considered to be technical in nature, namely:
– Discoveries
– Scientific theories
– Mathematical methods
– Aesthetic creations
– Schemes, rules and methods for performing mental acts, playing games or
doing business
– Programs for computers
– Presentations of information
The application of these exclusions are covered by section G, II, 3 of the Guidelines. The recent changes to this part of the Guidelines substantially affect only the highlighted categories.
The Guidelines for Examination provide a useful summary of the European Patent Office’s interpretation of the European Patent Convention, and the case law emerging from the Technical Boards of Appeal (TBA). They represent the practice adopted by the divisions of first instance, and particularly the practice that will be followed by examiners at the EPO. It is important to note, however, that the Guidelines are only an interpretation of the direction taken by the Technical Boards of Appeal. They are not written by the Boards, and the Boards are not bound by them.
SUMMARY OF THE CHANGES
Applicants hoping for sweeping changes to EPO examination practice in the areas noted above will be disappointed. Generally more detail is provided on current practice without actually altering it. The additional detail reflects what we have already been seeing day-to-day during examination, but it should be useful for applicants when considering whether to file at the EPO or not.
Below we discuss the key takeaway points regarding these changes and a discussion on the details.
At the end we have provided a table showing the TBA cases relied upon in the revised Guidelines, and identifying the newly cited ones.
G, II, 3.3 – MATHEMATICAL METHODS
This section of the Guidelines has been completely rewritten with a new sub-section covering artificial intelligence and machine learning, as well as a further sub-section covering simulation, design or modelling.
In relation to the EPO’s practice for the assessment of patentability of artificial intelligence and machine learning inventions, the adopted approach remains the well-established two-hurdle approach discussed here.
Takeaway Points:
Claims that are directed to purely abstract methods not requiring any technical means are likely to be excluded from patentability as a mathematical method as such. To reduce the likelihood of the EPO raising objection on this basis, it remains advisable to include the technical means, such as a computer, upon which a method is performed. However, even if no objection is raised on this basis, the EPO will of course perform the usual assessment of novelty and inventive step, and so any technical advantages or benefits of the mathematical method which is implemented on the computer should also be included in the specification to support argumentation in relation to inventive step.
Detail on the Changes:
In short, there have been no substantive changes in practice on the mathematical methods exclusion, which is a settled area of the law. However, some additional examples of technical applications which the EPO considers are not excluded have been included in the Guidelines, as well as references to additional case law.
The exclusion applies if a claim is directed to a purely abstract mathematical method and the claim does not require any technical means. For example, a method for performing a Fast Fourier Transform on abstract data which does not specify the use of any technical means would be excluded as a mathematical method as such.
However, if the claim is directed to a method which uses a technical means such as a computer, then its subject-matter has a technical character as a whole and is not excluded from patentability as a mathematical method.
Once it is established that the claimed subject matter as a whole is not excluded as a mathematical method, then the Guidelines outline how the EPO examiners should perform the usual assessment of inventive step using the well-established two-hurdle approach for assessment of inventions including both technical and non-technical features. In this approach, all features which contribute to the technical character of the invention (but only those features) must be taken into account when assessing inventive step.
The determination of when a mathematical method contributes to the technical character also remains unchanged from previous versions of the Guidelines. This is based on an assessment of whether the mathematical method contributes to producing a technical effect that serves a technical purpose which is applied to a field of technology or is adapted to a specific technical implementation.
However, what we do see in the revised Guidelines is more detail on when the mathematical method exclusion does and does not apply, with additional examples of technical applications and implementations of technical purposes which may or may not be excluded.
For example, claims relating to controlling an X-ray apparatus, steel cooling processes, digital audio, image or video enhancement or analysis, speech recognition, encoding of data for reliable transmission and storage, error correction coding of data for transmission, encrypting or signing electronic communications, and optimisation of load distribution in a computer network are likely not to be excluded as a mathematical method.
However, the Guidelines do outline how merely defining the nature of the data input to a mathematical method does not necessarily mean that the method is not excluded, referring to decisions T 2035/11 and T1029/06 which were not cited in previous versions of the Guidelines.
Finally, the new Guidelines also clarify that when a claim is directed to a mathematical method which is adapted for a technical implementation by virtue of its design motivated by technical considerations of the internal functioning of the computer, then the claim may have a technical character. Specifically, referring to the newly cited case T 1358/09, a claim directed to the adaptation of a polynomial reduction algorithm to exploit word-size shifts matched to the word size of the computer hardware is likely not to be excluded as a mathematical method because it has a technical character.
- 3.3.1 – Artificial Intelligence and Machine Learning
Takeaway Points:
This is a completely new section in the latest Guidelines and has been included in view of the increase in the number of patent applications that the EPO is receiving in this field. It also seeks to harmonise the EPO’s approach for the assessment of patentability of AI and machine learning inventions.
A helpful definition of AI and machine learning as being computational models and algorithms for various different purposes has been provided.
However, the EPO’s default position is that such general models and algorithms are of an abstract mathematical nature, and hence are excluded form patentability, irrespective of whether they can be trained.
Helpfully, examples of AI and machine learning subject matter which are likely not to relate to excluded subject matter have also been provided. This may help applicants to assess whether their AI and machine learning inventions are likely to be patentable in Europe.
Detail on the Changes:
Examples of subject matter that is likely not to be excluded as a mathematical method, and so hence might be patentable, are the use of a neural network in a heart-monitoring apparatus for the purpose of identifying irregular heartbeats and the classification of digital images, video, audio or speech signals based on low-level features such as edges or pixel attributes for images.
However, the Guidelines make it clear that the EPO considers that classifying text documents solely in respect of their textual content is not regarded to be a technical purpose but a linguistic one, referring to T 1358/09.
Further, classifying abstract data records or telecommunication network data records without any indication of a technical use being made of the resulting classification is also likely to relate to excluded subject matter, even if the classification algorithm may be considered to have valuable mathematical properties such as robustness, referring to T 1784/06.
However, where a claim relates to a classification method which serves a technical purpose, the precise steps of generating the training set and training the classifier may contribute to the technical character of the invention provided that the application explains how that technical purpose is achieved. Thus, such claims may not be excluded as a mathematical method.
One issue with claims in this field is detectability of a potential infringement of a granted patent. For example if a claim relates to training of a neural network, once the neural network has been trained, it can be difficult to determine how the network was trained. Applicants should bear this in mind when considering patent applications in this field.
- 3.3.2 – Simulation, Design or Modelling
Takeaway Points:
This is also a completely new section in the Guidelines. However, well-established case law has been used to provide a number of examples of the type of subject matter that is most likely not to be excluded, as well as examples which are likely to relate to excluded subject matter.
In common with sections 3.3 and 3.3.1 of the Guidelines, the theme which is important in the assessment of whether the claimed invention relates patentable subject matter is the assessment of non-technical features and technical features as well as their associated technical effect.
Detail on the Changes:
The Guidelines outline how claims that relate to methods of simulation, design or modelling usually include features which may be classified as mathematical methods or mental acts, meaning that they may be excluded from patentability.
However, a claim that relates to a computer-implemented simulation of the behaviour of a class of technical items, or specific technical processes, under technically relevant conditions, may not relate to excluded subject matter, as found in decision T 1227/05. Specifically, a claim that relates to the numerical simulation of the performance of an electronic circuit subject to certain noise may not be excluded, even if the method is performed prior to production or even if the method does not include the step of actually manufacturing a product.
Further, for a claim relating to a computer-implemented method of designing an optical system, the use of a particular formula for determining technical parameters, such as refractive indices and magnification factors, for given input conditions so as to obtain optimal optical performance is likely not to be excluded as a mathematical method.
For a claim relating to a computer-aided design of a product, system or process, the determination of a technical parameter that is intrinsically linked to the functioning of the product, system or process, where the determination is based on technical considerations, is also likely not to be excluded as a mathematical method, referring to T 471/05, T 625/11.
However, claims relating to simulation of non-technical processes such as a marketing campaign, an administrative scheme for transportation of goods or determining a schedule for agents in a call centre is likely to relate to excluded subject matter because they does not have a technical purpose.
Finally, claims relating to a logical data model for a family of product configurations is also likely to be excluded because it has no inherent technical character. Similarly, a claim specifying how to arrive at such a logical data model is likely to relate to excluded subject matter because it usually does not make a technical contribution beyond its implementation on a computer.
G, II, 3.5 – SCHEMES, RULES AND METHODS FOR PERFORMING MENTAL ACTS
Generally each exclusion has been given its own dedicated section in the new Guidelines and significantly elaborated upon to confirm current practice.
- 3.5.1 – Mental Acts
Takeaway Points:
Claims that can be read as being performed by the mind of a user as well as on a computer will continue to struggle during examination at the EPO. As always, it remains good practice to include the technical means upon which a method is performed, particularly for numerical calculation or simulation inventions. At the same time, claims that can be read as merely automating a known mental act should be avoided as they may be considered obvious.
Detail on the Changes:
There has been no substantive change in practice on the mental act exclusion, which is a settled area of the law. It is not enough that a claim specifies an invention that could be performed using technical means if the claim also covers non-technical ways of performing the invention. Often examiners will object if a claim covers methods that can be accomplished in the head of the skilled person, or at least with the aid pencil and paper.
What we do see in the revised Guidelines is more detail on when the mental act exclusion will apply. Interestingly, the revised Guidelines attempt to define a mental act, referring to them as “instructions to the human mind on how to conduct cognitive, conceptual or intellectual processes, for instance how to learn a language.” Previously the Guidelines have shied away from such specific definitions, although this bold attempt may well just be the authors picking up on the type of wording that is now prevalent in the case law of the TBA (see decision T 471/05 for example, which is now expressly recited in the Guidelines).
The revised Guidelines make it clear that the complexity of the method is irrelevant, and high complexity cannot be used as a reason for disqualifying a claimed invention as a method for performing mental acts as such. If technical means are needed to perform the invention (e.g. a computer) then the claims need to specify those means. This is in contrast to position in the UK, theoretically if not practically, where the courts have been willing to read the necessary technical means into a claim if it would not be practical for a method to be carried out mentally.
Once the presence of technical means of some sort is established, if the method steps are technical in nature (e.g. determining optimal values for specific technical parameters) then these can be considered to contribute to the technical nature of the invention. Furthermore, purely mental steps can still contribute to the technical nature of the invention if they have a technical impact on the rest of the invention. For example, selecting certain features of a product or selecting the location of a feature might contribute to a technical effect provided the decision is based on technical considerations.
- 3.5.2 – Playing Games
Takeaway Points:
Although technical innovations that sense user input and provide real-world sensory feedback are not problematic at the EPO, the patentability of innovations relating to games themselves will continue to be the exception rather than the rule.
Detail on the Changes:
Little has previously been made in the Guidelines of the exclusion for playing games, and so the new dedicated section in the revised Guidelines is long overdue. Having said that, the revised Guidelines provide clarifications to the law but no substantive change in practice.
Again, we see the attempt at a definition of game rules: “Game rules define a conceptual framework of conventions and conditions that govern player conduct and how a game evolves in response to decisions and actions by the players. They comprise the setup of the game, options that arise as gameplay unfolds, as well as goals defining progress in the game. They are normally perceived (or even agreed to) by the players as rules serving the explicit purpose of playing the game.” We also see useful examples of when innovations in the video game field will and will not be considered patentable.
It has long been established that such game rules are not patentable by themselves, but if they require technical means to implement them then these technical means might be patentable. As an example, the revised Guidelines now cite case T 12/08 which relates to a role playing video game requiring characters to appear in the gaming world at random times. The need for the characters to appear randomly is a game rule, but the specific method of calculating randomness was considered a technical implementation of the rule and therefore protectable.
In accordance with long held practice at the EPO, the revised Guidelines explain that technical results achieved by limiting the complexity of a game are not considered to amount to technical subject matter. Arguments that such inventions provide a reduction of memory, network, or computational resources are likely to be met with a response that a technical problem is being circumvented, in accordance with the Hitachi case (T 258/03).
- 3.5.3 – Doing Business
The EPO has always been wary of granting business method patents, generally seeing it as undesirable to provide patent protection that could restrict business practices. The EPO’s view is that business methods can be developed without the same level of effort required for more traditional R&D, and so examines such inventions carefully.
Takeaway Points:
Where an invention relates to business or administrative aspects the EPO will continue to examine the claims closely to check whether an argued technical benefit is achieved across the entire scope of the claim. The question to ask about any given feature, when considering if it falls within the exclusion or not, is whether competence for introducing said feature lies with a business person or administrator based on policy decisions, rather than an engineer based on technical criteria.
Detail on the Changes:
It has long been the case that the EPO construe methods for “doing business” widely. In practice objections are often raised against methods that might include no obvious step leading to financial gain on the basis that they are administrative in nature. This practice has now been explicitly incorporated into the Guidelines, which includes a list of activities that are deemed to fall within this exclusion.
The list of activities are not particularly surprising given the decisions from the TBA over the past few years, and include activities such as accounting, management and logistics. One notable mention goes to “communicating postings to a target user community based on location information”. This likely reflects the number of applications relating to social media, where location information is often introduced as a potentially technical feature. By inserting this example, and others, in the Guidelines the EPO is providing the examiners with ammunition to more easily object to this type of feature as being non-technical.
Notable in its absence from the revised Guidelines is a specific reference to the most notable development in this area of law in recent times – the introduction of the notional business person. The purpose of the notional business person is to help distinguish between technical and non-technical features. The notional business person has, to date, been the “pet project” of one particular Board (3.5.01). There is perhaps a nod in this direction when the revised Guidelines refer to features that lie “within the competence of a technically skilled person, such as a software engineer, as opposed to …… the competence of a business expert”. However, the writers of the Guidelines may be waiting for other Boards to adopt the same approach before explicitly incorporating it.
EPO practice will continue to look at whether a claimed invention merely circumvents, rather than solves, a technical problem. It can often be tempting for applicants to point to a technical benefit such as improvement in computer workload or storage requirements as supporting a technical improvement, but when these improvements are achieved as a result of aspects inherent in the business method they will not count as technical effects. The Guidelines continue to reference the (in)famous Hitachi case (T 258/03) in this regard.
G, II, 3.6 – PROGRAMS FOR COMPUTERS
Takeaway Points:
The existing section of the guidelines has been largely rewritten. Three new sub-sections have also been added, although one of those sections was previously listed as a sub-section under the Presentation of Information section (3.7) and so has therefore merely been moved. In addition to the four previously mentioned (and now well-known) cases T1173/97, T258/03, T424/03 and G3/08, mention of four more recent cases has been added. See the table and the brief discussion below.
Detail on the Changes
The following new sections have been added and are discussed separately below:
– 3.6.1 Examples of further technical effects
– 3.6.2 Information modelling, activity of programming and programming languages
– 3.6.3 Data Retrieval, formats and structures (reworded former section 3.7.2)
The new cases are T1227/05, T1784/06, T1370/11 and T1358/09.
The content of the new guidelines is largely the same as before. A further technical effect (a technical contribution) is required for a claimed computer program or computer implemented invention to avoid the exclusion from patentability of a computer program as such (Article 52(2) EPC), and this may take the form of the control of a technical process or the internal functioning of the computer or its interface.
Three of the newly cited cases are used to illustrate the idea that computer implemented inventions that perform a non-technical process more efficiently are not regarded as providing the required technical effect. In T1784/06 an algorithm for classifying data records was considered non-technical (commercial/administrative) in the absence of any disclosed technical use of the classified records. Enhanced speed of the non-technical algorithm was not enough to provide a technical contribution.
In T1370/11 The Board noted that “the improved speed of a computer program is not by itself a technical contribution to the art” as if it were then all excluded methods of doing business could be argued to be patentable, while in T1358/09 a method for classifying text documents was similarly considered as non-technical, despite it providing a classification scheme that required a computer and that no “human would ever perform”. Classifying documents was regarded as an administrative process, and “comparing a computer program with how a human being would perform the same task” was not seen as a suitable basis for assessing if the computer program provided a technical effect.
T1227/05 on the other hand provides an example of a case where the simulation of a circuit subject to 1/f noise was considered to be an “adequately defined technical purposes”.
- 3.6.1 – Examples of further technical effects
Takeaway Points:
This is a new section which summarises a number of examples where software claimed as computer implemented methods have been found to provide a further technical effect when run on a computer. The examples correspond to existing case law decisions, although the new section does not refer to the cases themselves.
Detail on the Changes:
Examples of computer implemented methods that provide possible allowable further technical effects include (but are not limited to):
- Methods run on a computer that: control an anti-lock braking system in a car, determine emissions by an X-ray device, compress video, restore a distorted digital image, or encrypt electronic communications;
- Computer programs designed based on specific technical considerations of the internal functioning of the computer, such as by being adapted to the specific architecture of the computer, including computer programs implementing security measures for protecting boot integrity and countermeasures against power analysis;
- Computer programs controlling the internal functioning or operation of a computer, such as processor load balancing or memory allocation; and
- Programs for processing code at low level, such as builders or compilers
3.6.2 – Information modelling, activity of programming and programming languages
Takeaway Points:
This section of the Guidelines is newly added, and serves to provide clarity for inventions that are in the field of computer programming and programs for computers. Although, such innovations are typically regarded as excluded from patent protection, by virtue of being abstract and failing to solve specific technical problems, applicants sometimes seek to avoid the exclusions by arguing that an improved program or programming technique has generally improved the computer on which it operates, or provided secondary technical effects such as ease of use for a programmer. This section of the guidelines make it clear that such arguments will not be persuasive.
Technical Board of Appeal cases T354/07, T1171/06 and T1539/09R are used as examples.
Detail on the Changes:
This new section refers to a number of activities, such as “information modelling”, “conceptual models describing the process of software development”, the “activity of programming”, “defining and providing a programming language” and confirms that these are regarded as intellectual activities that are devoid of “technical character” for the purposes of assessing patentability.
However, the application of an information model used in the context of an invention to solve a specific technical problem may make a technical contribution (see the Simulation, Design or Modelling section above).
When assessing programming environments, the guidelines make it clear that “features pertaining to the programming language do not normally contribute to its technical character. For example, in a visual programming environment, the provision of specific graphical building blocks is part of the programming language and makes no technical contribution if the only effect is easing the intellectual effort of the programmer.”
Innovations in computer programming that do not have application outside of that field to more general aspects of computer operation and control will not therefore be regarded as patentable.
3.6.3 – Data Retrieval, Formats and Structures
Takeaway Points:
The Data Retrieval, Formats and Structures section (previously G-II, 3.7.2) has been updated slightly and reworked as new section 3.6.3 under 3.6. Programs for Computers. There are no significant changes, but some of the key concepts like the meanings of “functional data”, and “cognitive content” are presented in more detail, and illustrated by citation of two further cases T1351/04 and T858/02, in addition to discussion of the previously mentioned case T 1194/97.
Detail on the Changes:
A rule of thumb for determining the patentability of a computer implemented invention that processes data is whether the intellectual content of the data is important to the operation of the invention. If the intellectual content is important, the reasoning goes that the invention is not concerned with computer operation on a technical level, but is merely processing data at a higher abstract level for the benefit of a user. Such innovations tend not to be regarded as making a technical contribution and so are generally excluded from patentability.
The new guidelines explain this concept in more detail. Decision T1194/97 previously cited introduced the concept of “intellectual content” using the terms “functional data” and “cognitive data”. The guidelines now provide definitions for the terms:
Functional data serve to control the operation of a device processing the data. They inherently comprise, or reflect, corresponding technical features of the device.
Cognitive data, on the other hand, are those data whose content and meaning are only relevant to human users. Functional data contribute to producing a technical effect whereas cognitive data do not.
Examples of functional data that provide potentially patentable data structures are now explicitly listed in the guidelines. T1194/97 involved the coded storage of a picture (cognitive content) together with “a data structure defined in terms of lines numbers and addresses which instruct the system how to decode and access the picture from a record carrier”.
The two new examples of allowable content include mention of “an index structure used for searching a record in a database” in T1351/04, which may be considered functional data (and therefore potentially patentable) since it controls the way the computer performs the search operation, and T858/02, regarding the provision of instructions in the header of an electronic message, which determines how the content elements of the message (the cognitive data) are to be assembled and presented.
Data models and information models claimed at an abstract logical level have no technical character however. Applicants must therefore be careful to claim the data structure as 1) a computer-implemented data structure or 2) a data format embodied on a medium or 3) as an electromagnetic carrier wave, and ensure that there is then functional or management data that contributes to technical character of a method performed by the computer.
G, II, 3.7 – PRESENTATIONS OF INFORMATION
Takeaway Points:
Following a detailed revision of this section of the Guidelines in 2017 very little has changed in the revised version. Presentations of information, including user interfaces, that credibly assist the user in performing a technical task by means of a continued and/or guided human-machine interaction process will continue to be patentable.
Detail on the Changes:
The recent amendments serve mainly to tighten up existing language, rather than provide any substantive changes. The EPO will continue to consider what information is presented and how that information is presented when looking at whether a UI invention provides a technical effect. If the information presented is technical in nature, relating to a technical state of a system that can be used to properly operate the system, then it will generally be patentable. Likewise if the information is displayed in a way that assists in performing a technical task. However, cognitive content and mere layout choices will not be protectable.
One notable change is the removal of a previous example acknowledging that technical effects arise if information is presented in a manner that enables a user to perform a technical task “in a more efficient or precise manner”. This doesn’t necessarily indicate a change in practice. More likely, perhaps, is that the example was being over (mis)used by applicants and so was removed to discourage this type of argument. In a similar manner, the prevalence of arguments from applicants relating to dealing with limited available screen size in mobile phones and tablets previously led to a specific passage being inserted to curtail this line of argument back in 2017 (“For instance, dealing with limited available screen space is part of designing presentations of information for human viewing and therefore not an indication of technicality per se”).
CLOSING COMMENTS
Whilst the general message conveyed by the Guidelines for Examination in the realm of computer implemented inventions has not changed significantly with the recent updates, significantly more detail has been provided to try to flesh out and demystify the EPO’s approach in this area. This is to be welcomed.
The additional examples provide further sign posts towards what will, and will not, be considered technical subject matter, without providing a precise definition of what is and is not technical. The EPO will never give such a definition, partly because there needs to be freedom for it to change and evolve as time (and technology) marches on.
Inevitably there will be innovations that will not fall within the examples given in the revised Guidelines, and extrapolation will often be required to make a judgement on whether an invention will be considered technical or not. In these cases, the revisions provide a good jumping-off point for applicants and practitioners to consider at the time of drafting their patent applications. Doing so can make all the difference when it comes to examination.
Please click here for a list of cited cases from the Technical Boards of Appeal. (The highlighted cases are newly cited.)
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
