Revised EPO guidelines on computer-implemented inventions

The European Patent Office Guidelines 2017 were recently published on the European Patent Office (EPO) website. They entered into force on November 1 2017.

Like the previous edition, this year’s guidelines include substantial, extensive and comprehensive improvements with regard to guidance on the eligibility of computer-implemented inventions (CII) parts. These parts have been discussed with the European Patent Institute (epi), in particular with the CII sub-committee of the European Patent Practice Committee.

The changes appear mainly in Parts F-IV and G-VII of the European Patent Convention Guidelines (the Patent Cooperation Treaty Guidelines are also available) and deal with the presentation of information eligibility and patentability. There is also a substantial revision of one example of eligible/non-eligible, patentable/non-patentable subject matter in CII, as asked and suggested by epi (see relevant article in epi Information 1/2017).

Specifically, Section 3.9 of Part F-IV relating to clarity now states that:

• claims directed to CII should define all of the features which assure patentability of the process which the computer program is intended to carry out when it is run; and
• an objection under Article 84 may arise if the claims contain program listings – short excerpts from programs may be accepted in the description.

Moreover, in case of inventions in which all of the method steps can be carried out by generic data processing means, the signal-type claim has been reintroduced as a possibility for applicants, after having been removed in last year’s edition, as remarked and suggested in the American Intellectual Property Law Association Electronic and Computer Law Committee newsletter of October 2016. Therefore, supposing that Claim 1 is a method claim with steps A, B and following, and Claim 3 is a computer program product claim, the latter may be written in the following alternative forms:

• A computer program (product) comprising instructions which, when the program is executed by a computer, cause the computer to carry out (the steps of) the method of Claim 1.
• A computer program (product) comprising instructions which, when the program is executed by a computer, cause the computer to carry out steps A, B and following.

A corresponding signal can be claimed as a data carrier signal carrying the computer program (product) of Claim 3.

In addition to computer readable (storage) medium or data carrier in the following alternative forms:

• a computer-readable (storage) medium comprising instructions which, when executed by a computer, cause the computer to carry out (the steps of) the method of Claim 1;
• a computer-readable (storage) medium comprising instructions which, when executed by a computer, cause the computer to carry out steps A, B and following; and
• a computer-readable data carrier having stored thereon the computer program (product) of Claim 3.

Patentability assessment
Section 5.4 of Part G-VII deals with patentability assessment of claims comprising technical and non-technical features. This is often the case of CII claims; therefore, several examples in this field have been provided.

As in existing 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 Article 56 requires a non-obvious technical solution to a technical problem (Board of Appeal decisions T 641/00, T 1784/06).

The steps that an examiner should perform in the patentability assessment were already present in the 2015 release, and the 2016 release introduced four worked-out examples adapted from case law. 

However, as remarked and suggested by epi (epi Information 1/2017), reference to case law has been removed and Example 3 substantially modified. This example illustrates a claim of a system for the transmission of a broadcast media channel to a remote client over a data connection, which involves a complex mix of technical and non-technical features. If all of the features appear to be technical and serve a technical purpose at first glance, an examiner should perform a detailed analysis of the technical character in comparison with the closest prior art.

This analysis could reveal that one or more features does not serve a technical but commercial purpose (in the example, a pricing model is provided which allows a customer to choose from several service levels, each service level corresponding to an available data-rate option having a different price). In this case, the commercial purpose should be incorporated in the formulation of the objective technical problem, as in T641/00. The example now avoids putting a pointer to the solution in the objective technical problem, which is reformulated as how to implement in the system of the closest prior art a pricing model, allowing the customer to choose a data-rate service level. The implementation is eligible, but found to be obvious in any case.

Presentation of information
This is also the case for the guidelines’ brand new and comprehensive Section G II 3.7 on the presentation of information. First, an interpretation is given of ‘presentation of information’ in the sense of Article 52(2)(d) of the European Patent Convention, which concerns any type of information (eg, visual, audio or haptic information) and includes both the cognitive content of the presented information and the manner of its presentation. Although the cognitive content is per se non-technical, eligibility of a presentation of information claim must be assessed with respect to the claim as a whole. A given example is that of a claim directed to a kit comprising a product (eg, a bleaching composition) and further features such as instructions for use of the product or reference information for evaluating the results obtained, wherein said features have no technical effect on the product. Such a claim is eligible, since the claim has a technical feature: a product comprising a composition of matter.

Once the claim as a whole is assessed as eligible, a closer analysis of interaction between technical and non-technical features must be performed, as in the above CII example. In the specific case of presentation of information, a feature defining a presentation of information is meant to produce a technical effect if it credibly assists the user in performing a technical task by means of a continued or guided human-machine interaction process. Such a technical effect is considered credibly achieved if the assistance to the user in performing the technical task is objectively, reliably and causally linked to the feature.

For example, in the context of a visual aid for a surgeon, if the current orientation of a medical ball joint implant in the course of surgery is displayed in a manner which credibly allows the surgeon to position the implant more precisely, this is considered to provide a technical effect.

Effects relying on human physiology, such as those aimed at presenting information closer to the user’s existing visual focus of attention, are considered technical, in particular when they are measurable. In contrast, information exclusively aimed at the user for his subjective evaluation (eg, layouts, diagrams or minimising information overload) or non-technical decision making does not qualify as technical information even if, ultimately, states of processors or memories are modified.

As can be deduced from the above, the mere fact that mental activities are involved does not necessarily qualify subject matter as non-technical. This mental evaluation may be considered an intermediate step in the technical process claimed, wherein the final technical effect would be impossible if the technical input to the mental evaluation were not specifically provided.

User interfaces
Section G II 3.7 also provides guidance on user interfaces. A salient point is that features defining user input are more likely to have a technical character than those solely concerning data output and display because input requires compatibility with the predetermined protocol of a machine, whereas the output may be largely dictated by the subjective preferences of a user.

For example, providing an alternative graphical shortcut in a graphical user interface allowing the user to directly set different processing conditions, such as initiating a printing process and setting the number of copies to be printed by a drag and reciprocated movement of a document icon on a printing icon, makes a technical contribution. Similarly, performance-oriented improvements to the detection of input – for example, allowing faster or more accurate gesture recognition or reducing the processing load of the device when carrying out the recognition – make a technical contribution.

In contrast, features concerning the graphic design of a menu (eg, its look and feel) which are determined by aesthetic considerations or features only contributing to a mental decision-making process, are not technical and cannot contribute alone to the eligibility of a claim.

Comment
With the above amendments, we strongly recommend practitioners to find effective direction in these revised guidelines for drafting their claim at the national level, in order to be in a better position for the EPO regional phase. However, intervention of a skilled European patent attorney is still valuable, since case-by-case assessment is a standard in the field.