IPcopy had the pleasure of attending the EPO ICT seminar at the end of September where recent developments at the EPO in relation to computer-implemented inventions (CII) were discussed. The seminar was held the week before the latest version of the EPO Guidelines for Examination (November 2018 edition) was published which meant we were teased a few times with what was about to be released.
We were however told that the 2018 update to the Guidelines contains some significant CII related changes*, in particular more examples that show what is regarded as technical and what is regarded as non-technical in areas such as business methods, computer programs, mathematical methods and data retrieval.
Interestingly, it was mentioned that the CII portions of the 2019 and 2020 versions of the Guidelines will probably only contain minor clarification amendments rather than the more significant changes that have been seen in the last few years. The CII Guidelines Working Group has had an ongoing project running since 2014 and the first batch of CII changes came out in the 2015 Guidelines (Problem-solution approach for mixed inventions/search for computer-implemented inventions), the second batch in 2016 (Claim forms for CIIs, examples for PSA for mixed inventions) and the third batch in 2017 (Presentation of invention and UIs). The 2018 Guidelines represent the fourth batch of changes and it was noted that we will likely only see clarification amendments for the next couple of years.
Now that the November 2018 Guidelines have been published IPcopy has taken a look at the CII sections and highlights the following changes :
For AI/machine learning it is noted that such items are per se of an abstract mathematical nature and when claimed subject matter is examined to see if it is technical in nature, terms such as “support vector machine” and “neural network” are looked at carefully as they usually refer to abstract models.
Some examples of applications of AI and machine learning are briefly discussed: neural network to identify irregular heartbeats – technical; image classification – technical; text classification based solely on textual content – not technical; classifying abstract technical records – not technical.
For simulation, design and modelling it is noted that claims directed to such matters typically comprise features falling under mathematical methods or methods for performing mental acts. When determining features that contribute to technical character the principles of G-II, 3.3 apply.
Examples of applications of simulation, design and modelling are then given: simulation of an adequately defined class of technical items, e.g. simulation of performance of an electrical circuit or a specific industrial chemical process – technical; simulation of a marketing campaign, administrative scheme for goods transportation or determining schedule for call centre agents – not technical. For the design of a product/process where a technical parameter that is linked to the functioning of a technical object is determined then this may be technical (e.g. designing an optical system using a particular formula for given input conditions). Where the design depends on decisions taken by a human however then the design may not be technical. For modelling, if a computer implemented model is just an abstract model of a product/system then this per se is not considered to be a technical effect.
G-II, 3.5.1 – Schemes, rules and methods for mental acts – a new section highlighting how the exclusion for performing mental acts is assessed.
G-II, 3.5.2 – Schemes, rules and methods for playing games – this new section covers the exclusion for playing games and notes that game rules are of an abstract nature. The section also notes that contemporary games (e.g. video games) may be characterised by complex interactive/narrative elements but these are still conceptual in nature. Technical means for implementing games rules may have technical character (e.g. the use of a computer to calculate a pseudo-random sequence). It is noted that as a principle “inventive step cannot be established by the game rules themselves, irrespective of how original they may be, or by their mere automation. It must rather be based on further technical effects of a technical implementation of the game, i.e. technical effects that go beyond those already inherent to the rules“. Psychological effects do not qualify as technical effects.
G-II, 3.5.3 – Schemes, rules and methods for doing business – there is a lengthy section that covers any subject matter or activities that might fall under the umbrella of “business methods”. There are a number of examples of the assessment of different types of “business methods” which may be useful to refer to when discussing the patentability of an invention in this field with an Examiner. IPcopy notes that at a recent “Evening with the (Appeal) Board” lecture the “Cardinal Commerce” case (T1463/11) was highlighted which covered the concept of the “notional business person”. It was suggested that the treatment of technical/non-technical features in relation to the notional business person in this case might provide a way of ensuring that “all technical matter” is considered for obviousness.
G-II, 3.6 – Programs for computers – the concept of a “further technical effect” has been expanded in this section and there are now a number of examples of further technical effects that have been provided. New sections on “information modelling, activity of programming and programming languages” and “data retrieval, formats and structures” (covering issues such as “functional data” and “cognitive data”) have been added
F-IV, 3.9.3 – Cloud Computing – the updated Guidelines contain a new section relating to cloud computing (or “distributed computing environments” in the terminology of the Guidelines). The Guidelines note that applications directed towards cloud computing systems may include claims directed towards different entities within the distributed system and that this may be allowable under Rule 43(2)(a) EPC though each independent claim needs to meet the requirements for patentability.
The topic of cloud computing and specifically what constitutes acceptable claim formulations was also covered at the above-referenced ICT seminar. Unusually for an EPO seminar the cloud computing conversation included a discussion of infringement issues related to distributed systems and German (Prepaid-Karten II, OLG Düsseldorf 2 U 51/08) and UK caselaw (Menashe v William Hill) was referenced in the context of claim formats and the legal fiction of the attribution of method steps to an infringer based in a territory when some of the steps may be performed, via the distributed system, outside the territory.
Although the EPO representative appeared to be suggesting that the referenced case law meant that drafting attorneys could be relaxed about the claim format used in distributed system cases(!), it was acknowledged that attorneys would seek to try what was referred to as “non traditional” claim formats. Such “non traditional” claim formats would seek to claim a series of steps/actions that were all occurring in a single territory but which might reference steps/actions occurring elsewhere (e.g. a method step focused on a user in a territory might refer to “initiating, using a device [based in the territory], an action [that occurs outside the territory]”).
The EPO representative acknowledged why a drafting attorney might seek to draft a claim in this manner but then suggested that under the EPC and its present case law such claim formulations would probably not fulfil the requirements of the EPC. So, all in all, attorneys will need to continue to come up with creative ways of claiming distributed systems.
Mark Richardson 12 October 2018
*(Note: this reference to “significant changes” does not mean that EPO practice is being changed, rather that the Guidelines are being overhauled in a number of places to more closely align to current practice at the Office).