Examination of patent applications at the European Patent Office (EPO) should conform with the Guidelines for Examination in the EPO, which are updated annually. The much anticipated and updated November 2018 edition, valid from 01 November 2018, is available here: Guidelines for Examination.
Of note, guidelines related to exclusions from patentability under Article 52(2) EPC have been entirely redrafted. These guidelines, at Part G – Chapter II, include:
3.3 Mathematical methods;
3.5 Schemes, rules and methods for performing mental acts, playing games or doing business; and
3.6 Programs for computers.
In contrast to previous editions, the November 2018 edition of the Guidelines for Examination beneficially expands upon, and provides examples of, inventions that overcome these exclusions and that are patentable at the EPO.
3.3 Mathematical methods: AI and ML
At the EPO, a mathematical method may contribute to the technical character of an invention by its technical application or its technical implementation. That is, a mathematical method may contribute to producing a technical effect that serves a technical purpose. Mathematical methods comprise Artificial Intelligence (AI) and Machine Learning (ML), which are included for the first time in the Guidelines for Examination, as detailed further below. Simulation, design or modelling is also explicitly included similarly.
For technical applications of mathematical methods, the invention must serve a technical purpose (T 1227/05, T 1358/09). Selected examples listed in the Guidelines of Examination of technical purposes served by a mathematical method include:
(i) determining from measurements a required number of passes of a compaction machine to achieve a desired material density;
(ii) encrypting/decrypting or signing electronic communications; generating keys in an RSA cryptographic system; and
(iii) providing a genotype estimate based on an analysis of DNA samples, as well as providing a confidence interval for this estimate so as to quantify its reliability.
Further, a mathematical method may contribute to the technical character of the invention (independently of any technical application) if the claim is directed to a specific technical implementation of the mathematical method and the mathematical method is particularly adapted for that implementation (T 1358/09). An example includes the adaptation of a polynomial reduction algorithm to exploit word-size shifts matched to the word size of the computer hardware is based on such technical considerations and can contribute to producing the technical effect of an efficient hardware implementation of said algorithm.
For inventions based on AI and ML, the Guidelines for Examination also include patentable examples of technical applications and technical implementations:
(i) use of a neural network in a heart monitoring apparatus for the purpose of identifying irregular heartbeat; and
(ii) classification of digital images, videos, audio or speech signals based on low-level features.
However, classifying text documents solely in respect of their textual content is not regarded to be per se a technical purpose but a linguistic one (T 1358/09) while classifying abstract data records without any indication of a technical use being made of the resulting classification is also not per se a technical purpose (T 1784/06). In contrast, where a classification method serves a technical purpose, the steps of generating the training set and training the classifier may also contribute to the technical character of the invention if they support achieving that technical purpose.
These definitions and examples of patentable and non-patentable (i.e. excluded) inventions thus more clearly define the boundary of the exclusion under Article 52(2) EPC for mathematical methods.
Opinion
The extensive update to the Guidelines for Examination is particularly welcome, harmonizing examination at the EPO of these rapidly-evolving and economically important technologies. A popular ambition of the EPO is to be world leader for granting patents for inventions based on AI and ML – and the update steps firmly towards this.
For Applicants, the update brings enhanced certainty as to the boundaries of the exclusions, especially for inventions based on AI and ML. This enables Applicants to better identify patentable inventions and to progress respective applications at the EPO with increased assurance. In this way, the Applicants may more effectively secure valid protection for their inventions based on AI and ML. It will be interesting to see how (and how quickly) examination of pending applications is transformed by the update. Applicants may wish to revise responses due to be filed at the EPO after 01 November 2018 – or even extend deadlines so as to file after 01 November 2018.
For Patentees and Opponents, the enhanced certainty as to the boundaries of the exclusions is also of relevance, highlighting potential challenges to invalidity at first instance of granted patents. This serves as a reminder that certainty may often be double-edged. Before the Boards of Appeal of the EPO, however, the Guidelines for Examination remain irrelevant.
If your business depends on technology based on AI and ML, we can secure the intellectual property (IP) protection you need, so you can maintain your exclusivity. In addition, we can define a clear path for you through the IP surrounding your technology, so you can continue and grow your business.
