“The volume of changes to the European Patent Office 2019 Guidelines is smaller than in previous years’ editions and therefore the Guidelines are appreciably stable now, although some changes have been made to software patentability guidelines as well as to other important sections.”
The European Patent Office (EPO) recently published its Guidelines for Examination 2019, which came into force on November 1.
Compared to previous years, the volume of changes is much smaller, and this witnesses the effort by the EPO in past years to arrive at a more stable text of the Guidelines, particularly concerning the software patentability sections.
Yet some changes have been made to software patentability guidelines as well as to other important sections, such as the numerical ranges and clarity matters. Continuing the trend of past years, the Guidelines continue to be enriched with helpful examples.
We regrouped the changes under the following topics:
- Computer-implemented inventions;
- Chemical and bio-technological fields;
- Dealing with parameters and numerical values;
- Procedural matters; and
The sections on computer-implemented inventions show only limited changes because the task of revising this topic in the Guidelines is considered by the EPO as substantially achieved. The few changes appearing this year have been discussed with the European Patent Institute (epi), in particular with the ICT Thematic Group of the European Patent Practice Committee within the epi.
Since the sections on computer-implemented inventions are scattered throughout some distant sections of the Guidelines, the attention of the reader is here drawn to the fact that the pdf text of Guidelines includes (at its end) a list of sections on the topic and the EPO website includes a useful html index for the Guidelines, with direct links to all these sections.
Mathematical Methods (G-II 3.3)
The few changes in this section are a mixed bag; some improve the Guidance for Applicants and Examiners, but some others are in our opinion ill-defined and risk the result of killing many otherwise patentable inventions, as we explain below.
Clarity of terms
An evergreen discussion at the EPO is about clarity of terms used in computer-implemented inventions, due to the fact that the field is fast-moving.
The Guidelines this year introduce a paragraph that says, “special attention needs to be paid to the clarity of terms used in claims related to mathematical methods. This is of particular importance where such terms are used in significantly different ways in the application itself and/or in relevant prior art documents, as this may be an indicator that the terms have no well-recognized meaning and may leave the reader in doubt as to the meaning of the technical features to which they refer, which may lead to findings of lack of technical character of the claims.”
We believe that such an added paragraph can be very dangerous. As mentioned above, in the field of computer-implemented inventions, there are no updated and well-recognized dictionaries, so that it is difficult to establish the “well-recognized” meaning. This can be a cause for many discussions with an Examining Division, which can be expensive for the Applicant, particularly when the Division makes reference to other patent disclosures that use some terms improperly.
We definitely think that the situation is nowhere close to a balanced solution and we hope that in the future the EPO will make it compulsory for the Examiner to provide some evidence that there would be a lack of well-recognized meaning, in addition to sufficient arguments as to why this lack should be interpreted as a lack of technical character of the feature/claim.
One way of including mathematical methods (which are per se excluded from eligibility) in a claim is by way of technical implementation, i.e. application of the mathematical method to a technical field. In this framework, a number of applications try to claim efficiency (speed) of the implementation on a computer as the main technical effect, with conflicting results.
This year’s guidelines improve the situation by adding a paragraph that leads the Examiner in their assessment of this specific case, by stating that, “if it is established that the mathematical method produces a technical effect when it is applied to a field of technology and/or adapted to a specific technical implementation, the computational efficiency of the steps affecting that established technical effect is to be taken into account when assessing inventive step.” (our emphasis).
We deem this addition very valuable and capable alone of simplifying the grant of a number of applications in the field.
This guidance is reflected also in the computer program eligibility section (G-II 3.6), where it has been made clear that “if a further technical effect of the computer program has already been established, the computational efficiency of an algorithm affecting the established technical effect contributes to the technical character of the invention and thus to inventive step (e.g. where the design of the algorithm is motivated by technical considerations of the internal functioning of the computer; see also G-II, 3.3).”
Concerning the Artificial Intelligence section introduced in the 2018 update, the guidelines for technicality assessment have now been softened to not induce the Examiner to think that some terms are generally devoid of technical character, while instead depending very much on the context of the invention. Accordingly, now the Guidelines specify that “expressions such as ‘support vector machine’, ‘reasoning engine’ or ‘neural network’ may, depending on the context, merely refer to abstract models or algorithms and thus do not, on their own, necessarily imply the use of a technical means. This has to be taken into account when examining whether the claimed subject-matter has a technical character as a whole (Art. 52(1), (2) and (3) EPC).” (our emphasis).
Financial transaction are per se excluded from eligibility. This year’s Guidelines give an example of non-eligible subject-matter in the field:
As a further example, in a method for carrying out electronic financial transactions with credit cards at a point of sale, the administrative decision to dispense with the need to obtain not requiring the transmission of the name or address of the buyer to authorise the transaction may result in saving time and reducing data traffic. However, this measure, on its own, is not a technical solution to the technical problem of the bandwidth bottleneck of communication lines and the limited capacity of server computers, but an administrative measure which does not contribute to the technical character of the claimed subject-matter.
In our opinion, the usefulness of this example is questionable. Indeed, it seems to be the basis for killing many applications in the field, owing to the fact that there are cases where information is not dropped, but simply rearranged among steps to provide a technical effect. An Examining Division referring to the above paragraph may not immediately see the difference between moving information from step to step to have less traffic and dropping it completely.
Chemical and Bio-Technological Fields
Deletion of alternatives and added-subject matter (H-V 3.3)
Deleting parts of the claimed subject-matter was already allowable under the old Guidelines if the corresponding embodiments were originally described. However, the update makes it clear that:
The deletion of alternatives from more than one list is only allowable if this does not result in the creation of new technical information that is not directly and unambiguously derivable from the application as originally filed.
In particular, limitations that do not result in the singling out of a particular combination of specific features but maintain the remaining subject-matter as a generic group which differs from the original group only by its smaller size will normally fulfil the requirements of Article 123(2) EPC.
A combination of specific features may be allowable if the application as filed provides a pointer towards that particular combination, e.g. by reference to preferred embodiments.
These principles also apply to the combination of features resulting from dependent claims.
Care should be taken, therefore, when amending claims by choosing features from a list. If the removal results in more than a mere dropping of features, that is in a new (sub-)combination of features, basis for the combination must be found in the description as filed. The section at hand gives a meaningful example of limiting an independent claim by both using a feature from a list in the description and incorporating a depending claim, the combination being not as such indicated in the description as filed.
It is here noted that this seems to be in some contradiction with section H-V 3.1 on “Replacement or removal of features from a claim”, wherein the “directly and unambiguously” provision has been removed for any invention field.
Obviousness in biotechnology research (G-VII 13)
A new section discusses what would be obvious to a skilled person in the field of biotech research. A difference is made between “reasonable expectation of success” and “hope to succeed”. The former relates to what is reasonable to expect when basing a research on prior art methods, the latter when, notwithstanding the prior art, non-trivial decisions need to be made in the course of research, going beyond a “reasonable expectation of success” and possibly indicating the presence of an inventive step.
Clarifications regarding file formats when filing sequence listings (A-IV, 5)
It is made clear that the sequence listing may be in TXT format, and the need for a statement accompanying the electronic form in accordance with Rule 30(1) and WIPO Standard ST.25 has been removed.
Dealing with Parameters and Numerical Values
Clarity of parameters (F-IV 4.11)
The EPO practice on assessing clarity of a product claim defined by parameters has not changed but has been made clearer by stating, based on well-known decision T849/11 (now mentioned as such) that the requirements of clarity:
with regard to the characterization of a product by parameters can be summarized as follows (see T 849/11):
(i) the claims must be clear in themselves when read by the skilled person (not including knowledge derived from the description);
(ii) the method for measuring a parameter (or at least a reference thereto) must appear completely in the claim itself; and
(iii) an applicant who chooses to define the scope of the claim by parameters needs to ensure that the skilled person can easily and unambiguously verify whether they are working inside or outside the scope of the claim.
Condition under (ii) can be met by a reference to appropriate section of the description, if it is too lengthy to be put in the claim, or when it is common general knowledge.
Under the topic of parameters, unusual parameters are characterized better in this update of the Guidelines, by specifying that
two main situations can present themselves:
(i) The unusual parameter measures a property of the product/process for which another generally recognized parameter is used in the field of the invention.
(ii) The unusual parameter measures a property of the product/process that was not measured before in the field of the invention.
As in the last year’s update, in case there is no possibility of conversion of the unusual parameter to a usual one, or in case the new measurement does not appear to be reproducible by the skilled person, a lack of clarity, and consequently a possible lack of novelty, would ensue.
Novelty of sub-ranges (G-VI 8)
According to Case Law Book 2019 (I.C.6.3.1):
a sub range selected from a broader numerical range of the prior art is considered novel if both of the following two three criteria are satisfied (see T 198/84 T 261/15 and T 279/89):
(a) the selected sub range is narrow compared to the known range;
(b) the selected sub range is sufficiently far removed from any specific examples disclosed in the prior art and from the end points of the known range;
(c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching).
Hence, the new case law book still keeps the third condition whilst the Guidelines drop it for the reason that it would pertain to inventive step and not to novelty (the section belonging to the topic of novelty assessment). However, the Guidelines still speak of technical effect, and there is no change in the inventive step part to account for the above deletion. Therefore, it is our opinion that this change concerning sub-ranges is not clear.
Late filed documents in opposition (D-VI 1)
The new text puts emphasis on what is considered as late filed:
The parties in inter partes cases are subject to a particular duty to facilitate due and swift conduct of the proceedings, in particular by submitting all relevant facts, evidence, arguments and requests as early and completely as possible. The evidence must be submitted as soon as possible (see D-IV, 188.8.131.52, and E-IV, 1.2). Furthermore any ground, fact and evidence filed by the opponents after the expiry of the opposition period are considered as late-filed unless they are due to a change in the subject of the proceedings.
This is fully in line with limitation to the late-file documents introduced with the new Rules of Procedure of the Boards of Appeal published earlier this year.
Abuse of proceedings in opposition (E-III 8.6)
Examples of possible abuse of the proceedings are now given in the Guidelines, such as i) proliferation of auxiliary requests which are not a reaction to the course of the proceedings, and ii) the opponent knowingly abstains from raising an assertion of public prior use, based on its own activities, until late in the proceedings, even though the evidence in its support had become fully available earlier to the opponent himself.
Completing procedural acts without taking over representation (A-VIII, 1.5)
Authorization for carrying out a procedural act by a professional representative that is not the one on record is now no more required, making it simpler to comply with a deadline. The intervening professional representative should make it clear, when performing the procedural act, that they do not intend to take over representation, and that they are acting on the request of the applicant.
Briefly, it is worth just mentioning the following changes:
- Interpretation of means-plus-function features (F-IV 4.13.2), differentiating the suitability of a tool for executing a method and the special configuration of means for carrying out the method, an example of the latter case being a programmed computer in a computer-implemented invention;
- Interpretation of “means for …” (F-IV 4.13.3), differentiating the means that define the application or use of a method, and those that define an effect arising from the steps of the method and are implicit therein; and
- Claim-like clauses (F-IV 4.4), wherein it is made clear that claim-like clauses appended at the end of the description must be deleted prior to grant.