“Video-conference has been made the standard means for oral proceedings at the examination and opposition level, even for the taking of evidence, thus rendering the workplace of the patent attorney totally irrelevant to the procedures.”
The European Patent Office (EPO) recently published its Guidelines for Examination 2021, which came into force on March 1.
The trend towards an accurate and detailed explanation of substantive and formal requirements is maintained, keeping up to speed with the recent case law. The changes are limited but helpful, and this witnesses the effort by the EPO in past years to arrive at a stable text of the Guidelines, particularly concerning the software and biotech patentability sections.
We regrouped the changes under the following topics:
- Bio-technological field;
- Computer-implemented inventions;
- Procedural matters.
In Part I of this article we will discuss changes for computer-implemented inventions and with respect to procedural matters.
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 Information and Communications Technology (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.
Clarity of terms (G-II 3.3)
A recurring 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 of 2019 introduced a paragraph that recited, “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 indicated the danger of this paragraph in our previous article on IPWatchdog, and we are happy to inform the reader that it has been removed completely.
The discussion on clarity in the dedicated committees goes on and seems to bring about positive results, although it is a slow process.
Data retrieval, formats and structures (G-II 3.6.3)
The difference between functional and cognitive data has been better explained, along with the clear statement that “A data structure or format contributes to the technical character of the invention if it produces a technical effect”.
Moreover, it has been specified that there may be cases where “a data structure or a data format may have features which may not be characterised as cognitive data (i.e. not for conveying information to a user) but which nevertheless do not make a technical contribution. For example, the structure of a computer program may merely aim at facilitating the task of the programmer, which is not a technical effect serving a technical function.”
Here, we take the opportunity to notice that two expressions are used throughout the Guidelines in relation to contribution to technical character: “the production of a technical effect” and “the existence of a technical purpose”. The latter seems to be more general and sometimes a technical purpose suffices to the end of determining a technical character, but often the two expressions appear together, in the Guidelines as well as in the case law, and are used as synonyms.
Database management systems and information retrieval (G-II 3.6.4)
We remarked, in our comments on the 2019 Guidelines, that there were few changes on the topic, but they were a mixed bag.
Now the section has been completely re-written. It is a clear statement of these new Guidelines that “database management systems are technical systems implemented on computers” and that “features specifying the internal functioning of a database management system are normally based on technical considerations”.
Of course, the section also specifies that this does not mean that all the features implemented in a database management system necessarily make a technical contribution. Again, a difference is made between functional elements (such as an index, hash table or a query tree) and cognitive elements (content of elements directed to the user): if a method of estimating relevance or similarity relies solely on non-technical considerations, such as the cognitive content of items to be retrieved, purely linguistic rules or other subjective criteria, the method does not make a technical contribution. Automatic linguistic analysis, on the contrary, normally involves technical considerations, if it has a technical effect. In fact, a retrieval based on similarity of meaning of terms is subjective (T 598/14), but optimizing the execution time of structured queries in a database management system is a technical effect.
We deem that this is a clear and effective improvement over the previous version of the Guidelines.
User Interfaces (G-II 3.7.1)
Considerations similar to database management systems above are made for user interfaces, which can be technical but not if a user input assistance is based on purely linguistic features (such as words predictive input mechanisms), unless the implementation on a computer entails a technical effect.
Method steps and data processing means (F-IV 3.9.2)
As already mentioned in the previous version of the Guidelines, a requirement is explained, which concerns the claim being unclear if a certain data processing means is needed to carry out a method, so that a corresponding apparatus claim cannot contain a simple reference to generic computer system but must recite the specific means. This is not the case if the method lies in the mere data processing of previously acquired data, because in this case it is clear that a generic computer can perform the method. A new, corresponding example is given.
Euro-PCT applications – Erroneous elements filed (C-III 1.3)
Rule 20.5bis PCT allows applicants to correct an erroneously filed element (description or claims) or part of the description, claims or drawings contained in an international application. The EPO has notified the WIPO that this provision is partially incompatible with the current legal framework under the EPC and will therefore not be fully applicable in proceedings before the EPO as receiving and designated/elected Office. This is the case when the receiving Office considered the correct application documents to be incorporated by reference, i.e. without changing the filing date: this incorporation by reference will not be effective in proceedings before the EPO as designated/elected Office.
The new Guidelines explain that the EPO will change the filing date to that of the filing of the correct documents, and the wrong documents will not be part of the application any longer. The EPO will inform the applicant about this, setting a time limit of two months for reply, unless the Applicant notifies the EPO that they want to keep the original documents in the application and disregard the subsequently field ones, or the other way around.
Applicants should bear in mind that either choice will have an impact on the search for the date and possibly on the subject-matter searched.
Video-conference (C-VII 5, E-III 1)
The current pandemic has determined an unprecedented social behavior change at the global scale. As a consequence, governments, institutions and companies have stepped up the use of remote computerized work to such an extent that it is likely to be continued in the coming decades.
Accordingly, the EPO has defined a strategy for oral proceedings, setting the rule that oral proceedings in examination proceedings are to be held by videoconference unless a direct taking of evidence is required or if there are other serious reasons for not doing so, e.g. where an impediment prevents an applicant or representative from participating in oral proceedings held by videoconference.
Examples of serious reasons for exception to the rule are, in particular, reasons relating to a participant to the oral proceedings as an individual (e.g. a proven visual impairment that prevents a representative from following oral proceedings on screen) and reasons related to the nature and subject-matter of the proceedings (e.g. where they involve the demonstration or inspection of an object where the haptic features are essential, to the extent that this is possible in accordance with the applicable provisions). Sweeping objections against the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons in this regard. Equally, the need to consider written evidence will not qualify as a serious reason (see E-III, 2.2; OJ EPO 2020, A134 and A40).
The evidence of witnesses is normally taken at oral proceedings either on the premises of the EPO or by videoconference. A party, witness or expert can even be heard by videoconference if the oral proceedings are otherwise conducted on the premises of the EPO (E-IV 1.6).
The above holds for oral proceeding in opposition as well, for the time being as a pilot project, but in this case an accepted exception can be the complexity of the case.
In summary, video-conference has been made the standard means for oral proceedings at the examination and opposition level, even for the taking of evidence, thus rendering the workplace of the patent attorney totally irrelevant to the procedures.
Unity of invention (F-V 2)
The section on unity of invention has been completely re-drafted with a painstaking description of the cases that may happen. This seems to be consistent with the current practice but helps to follow the reasoning of Examiners and – if possible – to object to it in a detailed way to avoid unwarranted division of an application.
In summary, the sections on computer-implemented inventions in the Guidelines 2021 show only limited but helpful changes. Database management systems and information retrieval as well as user interfaces are recognized as potentially eligible, and guidance on clarity of terms has a better explanation. Procedural matters, on the other hand, specify that incorporation by reference is not accepted by the EPO and that video-conference has been made the standard means for oral proceedings at the examination and opposition level, even for the taking of evidence.
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