Can Simulations be Patented in Europe? An Update

A Review of Oral Proceedings for G1/19

On 15 July 2020, the European Patent Office (the “EPO”) held Oral Proceedings for the pending G1/19 referral to the Enlarged Board of Appeal. Although no decision was reached by the Enlarged Board, they indicated their preliminary opinion on the referred questions and gave the Appellant and the EPO a chance to present arguments.

As a potential first, the Oral Proceedings were live-streamed due to the Covid-19 restrictions, which meant that those at home or in the office could attend. About 1600 had registered beforehand to view.

Question Under Consideration

The Enlarged Board is basically considering the question: can you patent (computer) simulations in Europe?

The questions are referred from T0489/14. This is a Board of Appeal case where the subject matter related to the simulated movement of pedestrians through a building. The initial referral was covered in this blogpost: G1/19 – Enlarged Board of Appeal to Consider the Matrix.

One of the issues thrown up by the appeal case is the status of T1227/05. The Board in T0489/14 were inclined to find that the pedestrian movement claim lacked inventive step, but felt this would conflict with T1227/05, which found that a claim to simulating noise when designing chips was patentable.

For reference for the discussion below, I will briefly repeat the referred questions, using the numbering convention of the Enlarged Board:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?

2. a) If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem?

2. b) In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3) What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

Quick Initial Answers

Below I set out some of the points that were raised during the Oral Proceedings. However, if you are looking for the quick outcomes I will indulge you.

Can you patent (computer) simulations in Europe? The answer so far appears to be “yes” – the discussion suggests that simulations are to be treated as per any other computer-implemented invention.

Referred Q1: Yes – basically as set out above.

Referred Q2a): Side-stepped by a likely finding of inadmissible.

Referred Q2b): No – something more than technical principles is required – likely a technical effect and a solution to a technical problem as per conventional computer-implemented inventions.

Referred Q3): The form of the claim does not matter.

We will need to wait for the final decision of the Enlarged Board to confirm these initial indications, and it is not impossible for their position to change after having considered the presentations in Oral Proceedings.

Amicus Curaie

Since the initial referral, 23 amicus curiae briefs have been filed. These can be read here.

Initial Enlarged Board of Appeal Opinion

On 22 June 2020, the Enlarged Board issued an initial communication that set out some of their thinking (see the first 22.06.2020 entry here). In particular, the communication set out a number of questions that the Enlarged Board felt had been raised by the referral.

Firstly, the board considered numerical simulations that have no direct link to physical reality, such as a change in or a measurement of a physical entity. They summarised two approaches as presented in the amicus curaie:

A technical system or process is simulated in a manner which sufficiently corresponds to the behaviour of the real system or process – in this case “virtual” or “potential” technical effects may be considered like “real” technical effects when applying COMVIK.
The numerical result of a simulation serves a technical purpose. This matches the decision in T1227/05, where the subject matter was patentable as it was directed to a tool for circuit design.

It was mentioned that technical considerations and/or the technical skills of the relevant skilled person could provide guidance as to what was patentable.

The Enlarged Board then set out a number of questions for discussion at oral proceedings:

Can COMVIK be used for computer simulation? [Possibly rhetorical.]
If we assume COMVIK can be applied:
- Can “potential” or “virtual” technical effects be treated as “real” technical effects?
- How do “mental acts” and “discoveries, scientific theories and mathematical methods”, as set out in Article 52(2)(a) and (c), interact with simulations?
- Does the technical purpose need to be in the claim? [Possibly rhetorical.]
Is there a difference between simulations based on “human behaviour or activities” and simulations based on “natural phenomena”?

We will look again at the answers to these at the end of this post.

Admissibility

The good news is that the Enlarged Board indicated (unofficially) that the referral was admissible, mostly.

The Enlarged Board appeared happy with the admissibility of questions 1), 2b) and 3). They did, however, have reservations about the admissibility of question 2a). Questions 1), 2b) and 3) can mostly be answered with simple “yes/no” responses, whereas question 2a) asks for a “list of criteria”. It seems the Enlarged Board are (maybe wisely) side-stepping those criteria.

The EPO was of the opinion that all the questions were admissible, as both of the two alternatives set out in Article 112 EPC are met: there is a question of the uniform application of law via the purported deviation of T1227/05 and the issue is of fundamental importance as it may affect the ever-growing fields of machine learning and artificial intelligence.

Deviation from T1227/05

The Enlarged Board also gave a hint as to their thinking on any potential “non-uniform” application of the law based on T1227/05. They noted that there may not be as much deviation as initially suggested. They believe that T1227/05 does not provide blanket support for the patentability of simulation methods. Within their discussion of “functional technical features” it is inferred there is support for both the finding that a claim to a simulation may have technical features and the finding that a claim to a simulation may lack technical features. The EPO’s representative also indicated that there were some initial versions of the claims in T1227/05 that were subsequently withdrawn that were found not to provide an inventive step.

Dynamic Patentability & COMVIK

Although now rather old-hat, it was nice to see confirmation that the EPO and practitioners are generally happy with the way patentability is assessed for computer-implemented inventions. The present approach, based on COMVIK, is stable and stands up well when applied to deep learning inventions. This field hardly existed as a field of technology a decade ago but now makes up a substantial part of many inventions in both traditional and non-traditional engineering areas. It is better to define “technical” dynamically via the case law as what is an “invention” changes with time.

Indeed, “simulation” appears to have touched a nerve with the EPO and the filers of the amicus curiae briefs – it’s a Trojan horse for wider questions raised by machine learning and modern numerical methods. Most want these forms of inventions and methods to be protectable.

With one eye on the future, I was also please that the EPO implied that a link to direct measurement or physical reality was possibly not needed. The EPO stressed that the trend is towards increasing digitalisation, and an increased blurring of the line between real and simulated. Problems may be avoided if the EPO approach sticks to the key issue of whether a technical problem is solved and whether there is a technical purpose.

COMVIK also confirms that the mere fact that a feature relates to a specifically excluded field does not mean it cannot provide a technical effect. It may provide a technical effect in the context of the whole invention if a technical problem solved.

“Technical Simulations”

Many discussions on patentable subject matter descend into a circular definition of the term “technical”. The EPO made some great points as to why this was needed (see the Dynamic Patentability section below) but also presented some possible routes out of the maze.

One definition from the EPO that I liked was that a “technical” simulation is a “useful” simulation. This was then deemed to require an accurate and realistic model of a technical system that provides useful design information to an engineer. Such a simulation would include “technical considerations” if it reflected (at least) in part technical attributes of the simulated system.

The EPO also suggested that one condition for a “technical” simulation is that it needs to directly provide technical data as opposed to more generic “data” that needs to be further analysed by a user to derive technical data. It provides an option to find that general pedestrian modelling lacks suitable technical features as it does not provide concrete parameters that are useable for building design. But it does raise the suggestion that a claim may be patentable if specific building parameters were provided as an output.

The Appellant raised a good counterpoint – that sometime negative determinations from a simulation are technically useful. For example, if the simulation says not to build a particular chip or building, surely these negative decisions are as important as active positive decisions?

One suggestion for sufficient conditions as per question 2 from the EPO was that the object of the simulation was limited to a technical system and that the output of the simulation provides technical information relating to that technical system. Cases where these conditions are met may be easier to deem sufficiently “technical”. If is found that it is not a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process, then another condition could be that the output relates to technical properties of the system that is simulated, e.g. parameters relating to the performance of the simulated system.

The problem then mainly arises for more generic claims to simulations of “technical systems” without any clear technical output relating to the system being modelled. It was suggested that this requires more consideration of “technical purpose” and that this “technical purpose” needed to be present in the claim.

“Technical Purpose”

The concept of “technical purpose” came up a lot in discussions, and formed a core part of the Appellant’s arguments.

The basic premise was that if a simulation method had a “technical purpose” it could be patentable. The Appellant offered the concept of “technical purpose” as a way out of the difficulty of defining “physical entities” within “physical realities”. They stressed that a simulation is a tool and that we should look at purpose of that tool.

I am not sure the Enlarged Board will be happy going too far down this path.

For example, how do you reconcile a “technical purpose” argument with later infringement? It seems silly to need to rely on a separate nebulous concept when deciding whether a claim infringes. It would thus seem necessary to include any “technical purpose” within the claim, ideally as clear limitations on the claim. In this case, can you not just look at the claim language rather than requiring an external concept. For example, if a claim is directed to “modelling a building design” and comprises a “model of a building”, you can talk about a “technical purpose” of “building design”.

Later the Appellant raised an example of weather simulation. This is generally deemed to be non-patentable as you cannot control the weather. However, if you have a blind control system that uses a weather simulation, this appears patentable. The Appellant tried to link this to the “technical purpose” arguments. However, it seems more to indicate that the field needs to be defined in the claim – the general weather simulation is not patentable but use of the same in a field of technology is patentable. This kind of argument basically shifts the focus: is the field of building design suitably technical? This is the million-dollar question all parties appeared to be ducking.

“Potential” and “Virtual” Effects

The EPO provided the best (and only) definition of “potential” and “virtual” effects, which arose in the communication from the Enlarged Board.

A “potential” technical effect was deemed to be an effect that occurs via use of the invention.

A “virtual” technical effect was deemed to be an effect that is achieved in a computer, where the effect corresponds to an effect that would be seen if the modelled process was happening in the real world.

This can get complicated because computer program product claims can be said to provide a potential technical effect – in themselves they do not provide the technical effect but when the computer program is executed the technical effect is provided. The EPO rightly says we need to park this interpretation and not get into repeated ground from earlier G decisions. The conclusion in general is that there needs to be a concrete technical effect, but this can occur as it occurs for computer program claims.

Another interpretation of “potential” technical effects is that these relate to the Appellant’s teleological effects, i.e. they are effects that arise when the simulation is used for its technical purpose. However, this also raises difficulties, so we will see if the Enlarged Board quietly drop this language, or at least stress that we are looking for a concrete technical effect within the claim as we would for a computer program claim.

With regard to “virtual” technical effects, the EPO was of the opinion that, generally, a virtual technical effect does not solve a technical problem of itself. However, the “virtual” technical effect may be further used to provide a concrete technical effect.

An example was provided that covered direct and indirect measurements. With indirect measurements we may take raw data and compute a quantity rather than explicitly measuring it. For example, the quantity may be an estimate of a physical variable that is not measured directly but that is computed from other measurements or data. In this case, the “virtual” technical effect may be deemed to relate to the “virtual” measurement. Another example of a “virtual” technical effect provided by the EPO was the use of “virtual sensors” or “digital twins”. In this case, you may have an indirect measurement in parallel with a direct measurement.

It seemed to be implied that a further step was needed that included the use of the indirect measurements to solve a concrete technical problem for patentability, but in other cases it seemed implied that the indirect measurement itself could be patentable. We will have to see what the Enlarged Board say about this.

Aircraft Wind Tunnel Simulations

Both the EPO and the Appellant provided an example of a virtual wind tunnel. The EPO discussed how simulations of wind tunnels may be used instead of real wind tunnels to estimate and test aeronautical properties of aircraft wings. It was indicated by the EPO that a new experiment design for the testing of aircraft wings would be patentable, subject to the other requirements of novelty and inventive step, regardless of whether it was a physical or virtual experiment. Both virtual and concrete experiment designs were deemed alternative solutions to the same technical problem – and both should be patentable. This was also echoed by the Appellant who indicated it was the technical effect or technical purpose, rather than the form of the method, that mattered.

“Natural Processes” vs “Human Activities”

Within the discussions, following the questions in the communication from the Enlarged Board, a distinction between “natural processes” and “human activities” was made. Unfortunately, we got no further than an indication that this distinction may be important.

The implied tone appeared to be that “human activities” may be more likely to fall within the excluded subject matter of Article 52(2) EPC and so not be able to contribute to an inventive step in themselves. The EPO provided an example of a simulation of human agents in an online auction (a nod to T0258/03 for the fans) – while it was implied that these simulations per se may not be patentable, it was also implied that a larger claim that includes these simulation may not be unpatentable, as long as the claim solved a technical problem or had a technical purpose.

For me, the discussions of “human activities” had echoes of the “cognitive effects” discussed in the case law – stuff that relies on conscious activity within the human brain is normally assumed not to provide an inventive step.

The EPO though raised the interesting counterexample of ray tracing and rendering. This is a detailed and necessarily accurate modelling of physical or natural phenomena but where the technical effect has a perceptual aspect – the aim is to provide a lifelike rendering of an object, even though that object does not exist. I was impressed that this was explicitly raised, as it shows the Enlarged Board need to be careful of relying on an explicit link to actual physical objects or systems, or effects that exclude human minds.

This divide between “natural processes” and “human activities” has the potential to throw up many traps for the unwary. For example, when considering “physical activity”, i.e. actions in the world, where do you draw the line between “natural processes” and “human activities”? This is a key question for the present facts, as pedestrians can be considered both a human undertaking an activity and as an object within three-dimensional space.

Mental Acts, Scientific Discoveries & Mathematical Methods

We are generally taught that the exclusions of Article 52(2) EPC are equal in kind, so it was interesting to see the EPO submit that some exclusions are more exclusive than others and that the practice for considering certain “non-inventions” may differ according to the type of “non-invention”.

For example, “schemes, rules and methods for playing games or doing business” are relatively easy to evaluate – if certain claims features are deemed to relate to these exclusions then they cannot provide an inventive step and you cannot obtain a patent for a business method by just performing it on a computer. However, “discoveries, scientific theories and mathematical methods” and “schemes, rules and methods for performing mental acts” may be harder to disentangle – most inventions begin as “mental acts” and use “discoveries, scientific theories and mathematical methods”. In these latter cases, it is more important to look at the technical considerations and the technical problem that is being solved.

Examples of “features” that may be found in simulation claims include: the algorithms used, the models used, the computer-implementation, what is being modelled, and the purpose of the simulation. In this list, the EPO were of the opinion that “models” were most similar to excluded “mental acts”; however, in a simulation method, the “model” often serves a purpose. If this purpose is technical then the claim may be patentable.

It was also noted that machine learning models avoid the need for models that incorporate (directly) technical principles – they are just trained – but these appear to be valid alternative solutions and so should not be excluded from patentability.

In certain cases, claims that appeared on the surface to be “mental acts”, i.e. that could be performed mentally, could involve technical considerations and may be replicating physical experiments & measurements. For example, they may form a new experiment design for building aircraft wings. The EPO thought that applying the “paper & pencil” test (i.e. it is not patentable if you can do it with pen and paper) was not conclusive and was trumped if a technical solution could be demonstrated.

This also nicely fits in with the reason why “scientific discoveries” are excluded – they lack a “technical purpose” or fail to provide a “technical solution”.

Practitioners will be interested to here that the EPO appeared to allow for more leeway for claims based on (but not exclusively to) “mental acts”, “mathematical methods”, “scientific theories” that concretely solve a technical problem, e.g. as compared to “business methods”.

Civil Engineering Bias?

Civil engineering is an interesting field as there is often a bias against it. For example, patent people much prefer chemistry or hard-core electronics and often feel uncomfortable with the fringes of “technology” where category definitions are “fuzzier”.

A subtext that runs through the referral, but that no-one is brave enough to tackle head on, is a question as to the “technical” nature of civil engineering; put bluntly, is civil engineering “technical” enough?

This is where you have the potential problem with T1227/05 – this case is in a comfortably “hard” engineering field – circuit design. Without some legal gymnastics, if your gut feeling is that the claim in T0489/14 is not patentable, you seem to be saying that “noise in circuits” is a suitable “physical reality” for “technical” character but “people in a building” is not.

Of course, the irony behind this queasiness for softer fields is that the maths behind “noise” or “people” modelling is often the same! For example, differential equations, finite methods and/or digital approximations may be used for both cases. So the only difference is the use case (circuit vs building).

Question 3 – Do You Need Any Special Claim Form?

This question was looked at in two ways: first, in the narrow manner of the question – what if the the claim is part of a (wider) design process, e.g. for verifying a design – and second, in a wider sense of whether you needed any steps before or after the “simulation” part of the claim to aid patentability.

In the second case, options that are familiar from the case law in the UK and US include a preceding step relating to an explicit “measurement” of a real-world environment and a following “control” or “material production” step that sets out an explicit use of the simulation. Although no firm decisions were made, the general tone appeared to be that neither of these steps needed to be provided, and that a claim to the core of the simulation may be considered on its own. Both the Enlarged Board and the EPO indicated they were happy with the current practice applied to computer-implemented methods. This appears good news for applicants – the “measurement” and “control” steps introduce complications for infringement, especially for server-based methods where different parties may perform different ones of these additional steps.

The EPO did raise an additional point regarding the third question – if the simulation claim as such does not meet the sufficient condition(s) required by the answer to question 2b), would embedding that claim in a wider claim (e.g. to visualisation to assist a user) fulfill the sufficient condition(s)?

Revisiting the Enlarged Board’s Questions

To finish we can look back at the questions asked by the Enlarged Board in their communication of 22 June 2020 and begin to see some answers forming.

Can COMVIK be used for computer simulation?
- Appears to be “yes”.
If we assume COMVIK can be applied:
- Can “potential” or “virtual” technical effects be treated as “real” technical effects?
  - “No” – something more appears to be needed.
- How do “mental acts” and “discoveries, scientific theories and mathematical methods”, as set out in Article 52(2)(a) and (c), interact with simulations?
  - They may be present and care should be taken not to dismiss the claim just because they are present.
  - A different approach to “business methods” may be necessary.
  - Again, what matters is not their presence but that it can be demonstrated that a technical problem is being solved using the simulation (and maybe the simulation provides a technical effect beyond the technical effect of the simulation per se).
- Does the technical purpose need to be in the claim?
  - Implied “Yes” – although not really discussed directly.
Is there a difference between simulations based on “human behaviour or activities” and simulations based on “natural phenomena”?
- Implied – “Yes” – the former requiring use within a claim to provide a technical effect (over and above the simulation per se); the latter possibly providing a technical effect more as-is – but requiring some form of ultimate technical aim, effect or purpose.

Again, we will see for sure how this translates into the decision of the Enlarged Board in due course. See you next time for that!

EPO Computer-Implemented Inventions – Spring Case Law Review

As we all bed into virus lock-down, here is a quick review of a few European Patent Office Board of Appeal cases that relate to computer-implemented inventions (so-called “software patents”).

T 2272/13 – Inventory Tracking

This first case (see link here) considered a claim related to the management of a set of distributed devices. These devices included a “mother device” that needed to track a number of “satellite devices” over a Wireless Local Area Network (WLAN). The claim involved sending a “reachability request” and alerting a user if one of the “satellite devices” did not respond. The invention was described in the context of portable inventory tracking, e.g. tracking personal belongings and locating lost devices.

At first instance, the Examining Division refused the case for relating to a “non-technical” inventory scheme. The Board of Appeal were highly critical of the Examining Division’s decision, in the end remitting the case back to first instance for search and examination. This was despite the specification of WLAN being a choice from a set of described protocols that included RFID, infrared and Bluetooth.

This case may be of use to applicants and appellants that are facing difficulties at first instance, especially where objections assert that any “technical” features of the claim are deemed to be “notorious” or common general knowledge. The Board cited previous cases T 690/06 and T 1411/08 and asserted that the term “notorious” had to be interpreted narrowly. To prove that a technical feature is “notorious”, it is necessary for the examining division to indicate that it is “so well known that its existence at the date of priority cannot be reasonably disputed” and that the “technical detail is not significant”. The Board were also critical of the Examining Division’s assertion that the claims related to “the automation of [excluded] processes”.

The case continues a trend within the Board of Appeals to clamp down on lazy refusals from the examining divisions; the preferred approach is for at least some prior art to be cited, and for evidence-based reasons to be provided.

T 1442/16 – ECG Monitoring

This second case (see link here) was directed to medical monitoring, in particular to the collection and display of electrocardiogram (ECG) data. The main request was broader, referring to “sensors”, whereas the auxiliary request was limited to “ECG electrodes” and “ECG data”. The more concrete “ECG” auxiliary requests were analysed in detail.

It was determined that the claims of the auxiliary requests differed from the closest prior art in that each axis of a set of multiaxis diagrams displayed ECG data from a respective ECG lead, and that the position and the angle of each of the axes corresponded to the location of the respective ECG lead on the patient. This allowed a three-dimensional heart model to be displayed together with the multiaxis diagrams, where each of the axes in the multiaxis diagrams extended from the centre of the heart model.

The case thus considered whether the differing features above could contribute to inventive step, or whether they related to the “non technical” presentation of information (e.g. as per Article 52(2)(d) EPC).

The appellants began by arguing that the arrangement of the axes reflected an underlying state of a technical system – the technical system being formed by the set of ECG sensors. The Board of Appeal disagreed with this – the arrangement of the data was found not to prompt the physician to interact with the ECG device or to contribute to the functioning of said device. The Board felt that the alleged technical effect relied on the user’s cognitive abilities, for example the physician’s knowledge of anatomy and the principles underlying ECG. As such the differing features set out above were deemed to be “non-technical” on the grounds that they related to the presentation of information. They were thus disregarded, and a lack of inventive step was found. A “polygonal shape” of certain auxiliary requests was also found to be “non-technical”. The appellant did manage to have some success with the last auxiliary request, where the addition of an alarm trigger moved the claim away from the presentation of information.

This case makes it clear that where sensor information is being displayed, to avoid features being dismissed as relating to the presentation of information, the underlying system being sensed needs to be a technical system; the human body is not considered to be a technical system. It appears not to have helped the appellant’s case that the arrangement of the data related to an approach that was well-known to physicians (the Cabrera system). Arguments for an inventive step will also be strengthened if the display of information facilitates interaction with the sensing device.

As an aside, the Board also indicated that just because additional features were introduced gradually, with language such as “in another embodiment”, this did not mean that the applicant has a “carte blanche to mix and combine features from different embodiments as they please”. It seems that the EPO will only accept a combination of features if an example is provided that explicitly has those features. This is something to beware of when drafting applications for Europe.

T 0247/15 – Targeted Online Advertising

The last case (see link here) concerned the selective delivery of advertisements to a plurality of online users.

In the Board’s view, “advertising” is, in general, considered a “non-technical” activity by the European Patent Office. Consequently, the content of advertisements or any effect the advertisements might have on a user’s behaviour or on the sales of a product (or a service) are not regarded as technical features or technical effects that, when present in a patent claim, can contribute to an inventive step.

In particular, the Board considered that the described effect of delivering advertisements more “efficiently” was not a technical effect, as it did not relate to a technical aim to be achieved or a technical problem to be solved by a skilled person. For example, “efficiency”, as described in the application, related to a more “efficient” scheduling of delivery of content or of “optimizing” the delivery of content. On closer inspection these were deemed to relate to the fulfilment of conditions for an advertisement campaign (i. e. assuring that content is delivered to users according to the agreement with the advertisers) and maximizing the quantity of delivered advertisements. The “efficiency” and “optimization” thus did not relate to a “technical” system, e.g. they did not consider the utilisation of technical resources of the computer network, for example. Instead, these related to contractual constraints of the advertising campaign. Selecting what type of advertisement will be delivered to a user based on their profile (e.g., a default or targeted advertisement), monitoring the delivery of advertisements and updating the delivery list accordingly, were all considered to relate to an underlying business model. The solution was thus deemed an administrative method that involved the scheduling of delivery of online advertising content, which in turn was based on an abstract mathematical model. It could not support an inventive step.

EPO Computer-Implemented Invention Round Up

A quick post that checks on the state of play for computer-implemented inventions (“software patents”) at the European Patent Office. It has a quick look at some minor updates to the Guidelines for Examination and then reviews a few recent Board of Appeal cases.

Guidelines for Examination

After the overhaul of 2018, there are relatively few updates to the Guidelines for Examination for the 1 November 2019 edition. I go through those that relate to computer-implemented inventions below. I recommend viewing the links to the sections with the “Show modifications” check box ticked.

Section G-II, 3.3.1 on “Artificial intelligence and machine learning” has been tweaked to indicate that terms such as “support vector machine”, “reasoning engine” or “neural network” do not by themselves imply a technical means. They must be considered in context (i.e. make sure you describe a “hard” engineering problem and context).

Section G-II, 3.3 on “Mathematical methods” has a few minor changes.

It is stressed that special attention needs to be paid to the clarity of terms in claims that relate to mathematical methods. If terms are deemed to have “no well-recognised meaning” this may make it difficult to demonstrate a technical character (and so care should be taken to provide detailed functional definitions within the detailed description).

It is also added that mathematical methods may produce a technical effect when applied to a field of technology and/or adapted to a specific technical implementation. In this case, the “computational efficiency” of the steps of the methods may be taken into account when assessing inventive step. This is echoed in a minor update to section G-II, 3.6 on “Programs for computers”.

As also discussed below, the EPO is hinting that it might be a good idea to provide some actual experimental evidence to back up claims of increased efficiency when dealing with more abstract software-style inventions.

T 1248/12 – Data Privacy

T 1248/12 considers the field of data privacy.

In this case, the Board distinguished the field of data privacy from the field of data security. It was implied that the field of data security could give rise to technical solutions that provide an inventive step under Article 56 EPC. However, the field of data privacy was felt to relate to administrative, rather than technical, endeavours. In particular, the Board held that de-identifying data, by removing individually identifiable information, and by aggregating data from a plurality of sources, was not technical. It was felt that the claims related to data processing with a legal or administrative aim, rather than a technical one.

It is noted that the specification of the patent application was relatively light on concrete technical details – this may have led the Board to a negative opinion. The generalizations to the field of data privacy are perhaps too heavy-handed; there appears to be room to argue that some data privacy systems do contain technical features. In the light of this case, those drafting applications directed towards a data privacy aim may wish to determine if the technical effects may be recast in neighbouring data security fields.

T 0817/09 – Scoring a Document

T 0817/09 related to a computer implemented method for scoring a document.

The scoring was related to history data and was generated by monitoring signatures of the document, where the signatures were provided in the form of “term vectors”. As per similar linguistic processing cases discussed before, the “term vector” was found not to be “an inherently technical object” and “semantic similarity” was deemed to be a non-technical linguistic concept. The Board considered that solutions developed by the “notional mathematician” or the “notional computer programmer” would generally not be technical, whereas solutions developed by a digital signal processing engineer could be technical.

On the facts, the claimed methods were not found to provide any resource savings that could be presented as a technical, rather than linguistic effect. This does, however, suggest that providing evidence of technical improvements, e.g. reduced server processing times and/or reduced memory usage, may help applications with algorithmic subject matter.

T 0697/17 – Database Management Systems

T 0697/17 considered the patentability of SQL extensions within a relational database.

At first instance, the Examining Division held that the claim in question “entirely described a purely abstract method”. The Board disagreed: they held that the claim related to a method performed in a relational database system, which was a known form of software system within the field of computer science and as such would involve a computer system. The claim was thus not an abstract method. The Board noted that describing a technical feature at a high level of abstraction does not necessarily take away the feature’s technical character.

In consideration of inventive step, the Board cited T 1924/17, and stated that features make a technical contribution if they result from technical considerations on how to (for instance) improve processing speed, reduce the amount of memory required, improve availability or scalability, or reduce network traffic, when compared with the prior art or once added to the other features of the invention, and contribute in combination with technical features to achieve such an effect. However, effects and the respective features are non-technical if the effects are achieved by non-technical modifications to the underlying non-technical method or scheme (for example, a change of the business model, or a “pure algorithmic scheme”, i.e. an algorithmic scheme not based on technical considerations). The Board made an interesting distinction between a “programmer as such” and a “technical programmer”, and stated it was difficult to distinguish abstract algorithmic aspects that were non-technical and arose from the “programmer as such” from “technical programming” aspects that arose from the “technical programmer”.

Returning to T 1924/17, the Board concluded that a database management system is not a computer program as such but rather a technical system. The data structures used for providing access to data and for optimising and processing queries were deemed functional data structures and were held to purposively control the operation of the database management system and of the computer system to perform those technical tasks. While a database system is used to store non-technical information and database design usually involves information-modelling aspects, which do not contribute to solving a technical problem, the implementation of a database management system involves technical considerations. In the end, the case, which had been pending for 13 years, was remitted back to the Examining Division with an informally rap over the knuckles. It provides a useful citation for those drafting and prosecuting applications relating to database management systems.

Revised Guidelines for Computer-Implemented Inventions

Examination practice at the European Patent Office follows a set of Guidelines. These are published online and provide guidance for European Examiners and applicants. They are updated annually.

An updated set of Guidelines came into force on 1st November 2018. The recent updates introduce major amendments to sections that cover subject matter that is excluded from patentability in European. These sections include those directed to “mathematical methods”, “schemes, rules and methods for performing mental acts, playing games or doing business” (often shortened to “business methods”), and “programs for computers”. The updates are relevant to those filing applications related to “computer-implemented inventions” (often colloquially referred to as “software patents”).

Although the amendments do not significantly change current practice at the European Patent Office, they do expand the guidance on what may and may not be protected with a European patent. They represent a significant upgrade and demonstrate the maturity of the case law with regard to computer-implemented inventions.

This post will review and highlight the updates. The post may be useful for those seeking to patent machine learning and artificial intelligence inventions. The updates cover the following areas:

claims to distributed computing systems;
inventions that use mathematical methods;
AI and machine learning inventions;
inventions that cover simulations and models; and
inventions that relate to business methods, gaming, mental acts or computer programs.

Distributed Computing

Section F-IV, 3.9.3 has been added to the section relating to claims for computer-implemented inventions. It provides expanded guidance and an example relevant to processes operating in a distributed computing environment. These processes form a basis for many real-world implementations of computer-implemented inventions. For example, a smartphone accessing a cloud computing service would implement a process operating in a distributed computing environment.

The section sets out the current practice of the European Patent Office. Claims in a claim set may be directed to each entity of the distributed system and/or the system as a whole. Such a claim set may be argued to meet the requirement for multiple independent claims set by Rule 43(2)(a) EPC, i.e. the claims may be allowed despite having multiple independent claims in the same category because the subject-matter of the claims relates to a plurality of interrelated products. However, each individual claim will need to meet the requirements of novelty, inventive step and clarity.

For example, if a cloud computing service provides a new image classification function via an application programming interface that is accessed by a smartphone, a claim set may feature apparatus claims to both a server computing device (the cloud server) and a mobile computing device (the “accessing device” or smartphone). If the smartphone is simply a generic smartphone making a network request (e.g. an “HTTPS request to a REST API endpoint”), it will likely not be new when compared to known smartphones. An objection will be raised against the smartphone claim. However, if the smartphone implements some new low-level processing, e.g. some new feature extraction process that is specific to the new image classification function (like pre-extracting cat-like facial features), it may also be new and inventive in itself and be allowed.

The updated section draws our attention to the need for clarity in claims to distributed entities. It recommends that distributed method claims specify the entity that is performing each method step.

Claiming distributed processes in a challenge. In practice, one entity often implements most of the new and inventive process (e.g. the cloud server), while other devices are relatively “thin” and generic (e.g. the smartphone). However, claims to the accessing device are often of greater commercial value (e.g. they might allow a royalty for each smartphone that is sold). This often leads to the inclusion of claims to the mobile computing device in a claim set, but a high likelihood of an objection being raised by the European Examiner.

To attempt to overcome novelty and inventive step objections to “accessing device” claims, it is common to include an indirect or implicit reference to the functions of the server computing device. This can then lead to one or more clarity, novelty or inventive step objections. For example, the indirect features may trigger a clarity objection for not clearly specifying features of the “accessing device”. Alternatively, the indirect features may be ignored for novelty and/or inventive step, as they are deemed to present no inherent structural limitations for the “accessing device”.

When drafting claims to distributed systems, it is worth questioning the inventors to determine what functions may be implemented with low-level adaptations to the accessing device. If the invention can be embodied in an “app”, it is worth looking at the architecture of the app, and the sequence of low-level system calls it may be implementing. This may not be obvious to the inventors, as commercial and engineering demands often require as much functionality as possible to be embodied on the back-end in the cloud.

Mathematical Methods

The section on the examination of mathematical methods has been re-written and two sub-sections have been added. A first sub-section – 3.3.1 – now provides specific guidance for artificial intelligence and machine learning. A second sub-section – 3.3.2 – expands upon claims to simulation, design or modelling.

The updated guidance is now clearer on the importance of “technical means”, i.e. a concrete implementation in a field of technology, when an invention makes use of mathematical methods. This complements the recent changes to practice for “abstract inventions” in the United States.

I really like the updates to this section and the inclusion of helpful concrete examples. The section emphasises that a mathematical method or algorithm per se will not be enough to make a claim feature patentable, although many patentable inventions do have a mathematical or algorithmic basis.

Examples of the Fast Fourier Transform, geometric objects and graphs are provided: these features may contribute to the technical character of an invention if they contribute to producing a technical effect that serves a technical purpose. Put another way, these features need to be provided in a context that relates to an engineering problem encountered in the real-world, and the use of these features needs to result in a change in the real-world that helps solve that problem. This is further emphasised later in the guidance – the technical purpose of the mathematical features needs to be specific rather than generic, and the claim needs to be functionally limited to the technical purpose, either explicitly or implicitly.

What kind of applications are seen by the European Patent Office to be “technical”? My personal definition is: does the application relate to something in the real-world that requires knowledge that is taught in an undergraduate engineering degree? If the answer is “yes”, then the application is “technical”. If the answer is “no”, then the application may not be “technical”.

Section 3.3 now provides a useful list of purposes that are deemed “technical”. These include:

controlling a specific machine or technical process, e.g. an X-ray apparatus or steel cooling;
using measurements to control a machine or technical process, e.g. using a compaction machine to achieve a desired material density;
digital audio/visual processing, this can be relatively high-level – detecting people is a provided example (but a clear relation to captured data is recommended);
processing speech data, e.g. to generate text (but processing text per se may not be technical);
encoding data, e.g. for transmission or storage;
cryptography;
load balancing;
generating higher-level measurements by processing data from physiological sensors or other medical diagnosis;
analysing DNA samples to provide a genotype estimate; and
simulating “technical” things (this is described in more detail in new sub-section 3.3.2).

The section stresses that there must be a sufficient link between the technical purpose of the invention and the mathematical method steps, for example, by specifying how the input and the output of the sequence of mathematical steps relate to the technical purpose so that the mathematical method is causally linked to a technical effect. When drafting an application for Europe for an invention that features mathematical operations (e.g. equations and/or algorithmic designs), it is recommended to place such an explanation in the description – this can then be pointed to in examination if any objection is raised.

Similar to practice in the United Kingdom, the section ends by indicating that a feature may contribute to the technical character of an invention independently of any technical application, when the claim is directed to a specific technical implementation of a mathematical method, and the mathematical method is particularly adapted for that implementation in that its design is motivated by technical considerations of the internal functioning of the computer. Using the Fast Fourier Transform example, it may be possible to obtain protection for a new digital implementation of the Fast Fourier Transform, if you were performing specific mathematical operations that were adapted to the available computing resources of the implementation, e.g. available memory registers, processing cores, etc.

When considering inventions involving mathematical methods, one useful approach is to make an initial determination:

Does the invention relate to a specific engineering application (e.g. what branch of “applied” maths is being considered)?
Or does the invention relate to a new technical implementation of a mathematical operation (e.g. in effect a new and beneficial way of performing mathematical operations or “computing” using a device – sometimes called “core” inventions)?

A positive answer in the first case, suggests a quick check against the provided examples and the case law to determine if the specific engineering application has in the past been deemed to be “technical” under European practice.

A positive answer in the second case suggests looking carefully at the constraints imposed by the electronic hardware of the implementation. You will need to describe how the mathematical method is adapted, e.g. as compared to a “text-book” application, to provide concrete implementational improvements.

Artificial Intelligence and Machine Learning

Sub-section 3.3.1 is relatively short and seeks to summarise existing case law that applies in this area. This anticipates a large rise in patent applications over the coming years.

Machine learning inventions have been patented at the European Patent Office almost since its inception in the late 1970s. The present sub-section reminds us that despite the recent resurgence in neural networks, algorithms for approaches such as “classification, clustering, regression and dimensionality reduction” including “genetic algorithms, support vector machines, k-means, kernel regression and discriminant analysis” have been around for a number of years.

The sub-section stresses that the algorithms and approaches themselves per se of an abstract mathematical nature. The guidance from section 3.3 therefore applies: the invention either needs to relate to a specific engineering application that uses the approaches (e.g. using k-means clustering to classify packets in a network for selective filtering) or a new technical implementation of the approach that is constrained by technical factors at least the underlying computation hardware.

The sub-section hints that “technical character” often requires a clear causal link to measured data that represents physical phenomena. For example, classification of digital data such as physiological measurements, images, videos, or audio data is seen to be a common “technical application”. However, classifying text data is regarded as a “linguistic” and “non-technical” application. Likewise, general classification of “data” or “records” without a link to a specific technical problem would likely be seen as “non-technical”. Reference is made to case T 1358/09.

The sub-section ends by indicating that if a classification method is seen to serve a technical purpose then the steps of generating the training set and training the classifier may also contribute to the technical character of the invention if they support the technical purpose. This provides useful advice for drafting claims for inventions in this area: it is recommended to consider independent claims to the generation of training data and architecture training, as well as claims to an inference step. These claims may also provide a distributed processing system as discussed in section 3.3, for example inference may be performed on a smartphone, whereas data cleaning and training may be performed on a remote server. Care should be taken to cover different infringing acts.

Simulation, design or modelling

Sub-section 3.3.2 draws out material that was present in section 3.3. Discussing this material in a separate sub-section clarifies the high-level overview now present in section 3.3.

A computer-implemented simulation of a specific technical system or process may be seen to provide a technical effect and lead to a granted European patent. However, objections will be raised to computer-implemented simulations of non-technical systems or processes, such as those with an aim in the fields of finance, marketing, administration, scheduling or logistics. Care should be taken; cases such as T 531/09 indicate that the presence of technical devices (X-ray scanners in that case) is not enough to provide technical character, the technical devices need to be specific devices and the simulation needs to perform a technical purpose.

In the field of computer-aided design, the determination of a technical parameter which is intrinsically linked to the functioning of a technical object, where the determination is based on technical considerations, is a technical purpose. For example, a method of determining a particular value for a parameter of a specific technical device, in a manner that improves production or use of the device may be seen as suitably “technical”. Care should be taken if the design involves decisions to be made by a human being – e.g. the selection of an approved value – this intervention may be seen to break a causal chain that connects the design method to a technical purpose. Such decisions also risk importing factors that are outside of a narrow determination based on “technical considerations”.

Finally, this new sub-section suggests that claims that produce “models” will often lead to objections on the grounds that the models are not technical features per se; instead, they are seen as “abstract” mathematical or mental features. This again complements current practice in the United States. It is emphasised that generation of a model may be considered to lack a technical effect, even if the modelled product, system or process is technical. It this case it is important that the claim clearly indicates how the model is used, or to be used, in a technical system or process to solve a technical problem.

Business Methods

The previous high-level summary in section 3.5 has now been deleted, with this material being moved into separate sub-sections related to each of “performing mental acts”, “playing games” and “doing business”. Each sub-section then contains new material relating to each sub-category.

Each sub-section begins with a useful definition of each exclusion. Although this is described in the context of the exclusion being applied to the whole claim (e.g. the exclusion applying “as such” or “per se”), this often will not occur in practice, e.g. in most cases the exclusions set out in Article 52(2)(c) EPC will be avoided by having the method performed by a computing device. However, the definitions are useful as they indicate which claim features may be ignored for inventive step on the grounds that they provide no technical effect.

Mental Acts

These are described as instructions to the human mind on how to conduct cognitive, conceptual or intellectual processes. The learning of a language is given as an example, which hints at how the European Patent Office legally support an objection to “linguistic” features (e.g. text processing) as being non-technical.

When drafting claims to computer-implemented inventions, especially method claims, care should be taken to avoid accidentally falling within the exclusion. For example, claims should be checked to ensure that the method steps therein cannot be performed entirely in the human mind; at least one step needs to be performed outside of the human mind. In practice, considering whether a method step can be performed in the human mind is useful when predicting whether inventive step objections may be issued during European examination; if the determination is positive, the method step can often be drafted or amended in a manner that avoids this interpretation, e.g. by referring to a specific technical apparatus. The sub-section indicates that a method would not be seen as performing mental acts if it requires the use of technical means or if it provides a physical entity as a resulting product.

The sub-section does not indicate that mental steps are necessarily ignored for an analysis of inventive step; however, it does emphasise that are mental steps must contribute to producing a technical effect that serves a technical process. A good example provided in the sub-section is that of affixing a driver to a Coriolis mass flowmeter: steps specifying the position of the driver may be performed mentally but by defining the position so as to maximise the performance of the flowmeter, a technical contribution is provided.

Games

Games are defined in sub-section 3.5.2 as a conceptual framework of conventions and conditions that govern player conduct and how a game evolves in response to decisions and actions by the players. Games are governed by game rules, that are by their nature abstract, mental entities that are only meaningful within a game context. Games may be simple – matching random numbers – or complex – video games with extensive virtual game worlds.

If a claim sets out technical means for implementing the rules of a game, it is not excluded as such and analysis moves onto inventive step. To provide an inventive step, a claim feature must make a technical contribution, i.e. provide some engineering benefit beyond a mere computer-implementation of the game rules. The benefit of a claim feature is to be assessed from the point of view of an engineer or game programmer, who may be given the games rules by a game designer as a “requirements specification”.

The sub-section indicates that in many situations the burden is on the applicant to show that a gaming invention provides a real engineering benefit. It notes that abstracting non-technical game elements, relying on a complexity of a solution or indicating cognitive content will not help the applicant.

It is interesting to compare the general negativity of this sub-section with cases such as T 928/03 and T 12/08 that presented a more liberal view of the technical nature of gaming inventions. It will be seen whether they represent a narrower approach than seen in the past.

Doing Business

Doing business is defined in sub-section 3.5.3 as including activities which are of financial, commercial, administrative or organisational nature. The latter two areas should be noted; they are often overlooked as they do not directly relate to making a profit but are still seen to be “non-technical”.

Some useful examples of “business method” features are provided. They include:

banking,
billing,
accounting,
marketing,
advertising,
licensing,
management of rights and contractual agreements,
legal activities,
personnel management,
workflows,
scheduling of tasks,
logistics,
organisational rules,
operational research,
planning, forecasting,
business optimisation, and
data science for the purpose of managerial decision making.

If an invention relates to any of these features, it should be assumed to relate to excluded subject matter unless there is strong evidence that a technical problem is being solved by a technical solution that involves technical considerations.

For practitioners, a disclosure document or inventor from industry will often present an invention in terms of a commercial benefit. For example, inventors often become familiar with internally promoting an invention on commercial grounds. Care should be taken to dig behind these grounds and return to the underlying engineering aspects of the idea. If no engineering aspects can be presented, the idea may not be suitable for a European patent application. Examiners and Boards of Appeal will also use an indication of a commercial benefit, or the presence of the above business features, as evidence of a lack of a technical contribution. For this reason, it is recommended to avoid discussing these when drafting the patent specification.

Programs for Computers

Section 3.6 has now been redrafted and sub-sections 3.6.1, 3.6.2, and 3.6.3 have been added to respectively cover “further technical effects”, “information modelling” and programming, and “data retrieval, formats and structures”.

Section 3.6 now begins by indicating that computer programs must produce a “further technical effect” to avoid exclusion on the grounds of being a computer program “as such”. A “further technical effect” is an effect that goes beyond the normal operation of a computer, e.g. the physical effects of executing a computer program. Controlling a technical process or the internal functioning of a computer or its interfaces are deemed to be valid “further technical effects”.

Although not explicitly indicated in section 3.6, it is relatively straightforward to demonstrate a “further technical effect” and avoid an objection to the whole claim under Articles 52(2)(c) and (3) EPC. For example, claims to a computer program may be said to provide a “further technical effect” if they include instructions to implement a technical method, e.g. if they indicate a dependency to an independent method claim that is deemed technical. In this manner, European patent applications often feature claims to a “computer program for implementing the method of claim X”.

Further technical effects that may be demonstrated by a computer program are set out in sub-section 3.6.1. These include:

controlling a technical system or process (e.g. a braking system of a car or an X-ray device);
data processing in any of the areas highlighted in section 3.3, e.g. audio/visual processing, encryption or compression;
improving the internal functioning of a computer running the program, e.g. programs that are adapted for a specific architecture or that provide benefits at the kernel or operating system level; and
providing low-level tools such as compilers, memory allocators, and builders.

This updated section and its sub-sections are more useful in indicating what kind of features may be deemed to provide a technical effect. For example, if a feature of a computer program is deemed to provide a “further technical effect” as set out in this section, the feature would be seen as “technical” and be counted in any evaluation of inventive step (e.g. for other independent system or method claims).

Information Modelling and Programming

Sub-section 3.6.2 now provides useful guidance when the invention relates to aspects of computer engineering or software in itself, e.g. as opposed to a computerised solution in another field of engineering. While software developers may assume that their solution is technical according to the normal use of that term, features may not actually be “technical” for the requirements of patentability.

Information modelling is defined here as relating to providing a formal description of a real-world system or process. It may be seen to relate to models built in graphical or textual modelling languages, such as the Unified Modelling Language (UML) or the Business Process Modelling Notation (BPMN). Information Modelling may result in data models or templates that represent an underlying process.

Programming is defined as relating to the way in which computer code is written. It can involve choosing certain options or conventions for performing a common functional operation, or defining and providing a programming language, including text-based or graphical systems.

This sub-section stresses that information modelling or programming features that improve the intellectual effort of a programmer or software developer will often be seen to lack technical character and so cannot contribute to an inventive step. Benefits such as re-usability, platform-independence, conciseness, easier code-management or convenience for documentation, are not regarded as technical effects. For a feature to provide a technical effect, it must provide an improvement from the viewpoint of the computer, as opposed to the programmer. For example, manipulating machine code to provide for greater memory efficiency is seen as providing a technical contribution.

Data retrieval, formats and structures

Computer-implemented data structures or data formats embodied on a medium or as an electromagnetic carrier wave may be claimed, as they do not fall within the exclusions of Article 52(2) EPC. This sub-section has been relocated from previous section 3.7.

This section emphasises that cognitive data, i.e. data that is only relevant to a human user, cannot normally contribute to an inventive step. However, functional data, i.e. data that controls a device processing the data and that reflects technical features of the device, can.

Some examples of functional data are provided. These include a picture encoding, an index structure for a relational database, or a header structure of an electronic message. It is emphasised that the actually data content of the picture, database record or electronic message is often seen to be cognitive content and so cannot contribute to an inventive step.

Can you protect Artificial Intelligence inventions at the European Patent Office?

In recent years there has been a resurgence of interest in machine learning and so-called “artificial intelligence” systems. Much of this resurgence is based on advances in so-called “deep learning”, neural networks with multiple layers of connections. For example, convolutional neural networks now provide state-of-the-art performance in many image recognition tasks and recurrent neural networks have been used to increase the accuracy of many commercial machine translation systems. Machine learning may be considered a subdiscipline of “artificial intelligence” that deals with algorithms that are trained to perform tasks such as classification based on collections of data. This recent resurgence has meant that more companies wish to protect innovations in this field. This quickly brings them into the realm of computer-implemented inventions, and the nuances of protection at the European Patent Office.

A881388C-9C65-470D-AED6-9C584435DA4A — Obligatory “Terminator” Patent Attorney Stock Image

Computer-Implemented Inventions

“Computer-implemented invention” is the European Patent Office term for a software invention. Claims that specify machine learning and artificial intelligence systems are almost certainly to be considered “computer-implemented inventions”. The innovation in such systems occurs in the design of the algorithms and/or software architectures. Claims for new hardware to implement machine learning and artificial intelligence systems, such as new graphical processing unit configurations, would not be classed as computer-implemented inventions and would be considered in the same manner as conventional computer devices.

What Do We Have To Go On?

As key advances in the field have only been seen since 2010, there are few Board of Appeal cases that explicitly consider these inventions. It is likely we will see many Board of Appeal decisions in this field, but it is unlikely these will filter through the system much before 2020. However, applications in the field are being filed and examined. The following review is based on knowledge of these applications, evaluated in the context of existing Board of Appeal cases.

Prior Art

A first issue regarding machine learning and artificial intelligence systems is that many of the underlying techniques are public knowledge, given the rapid turn-over of publications and repositories of electronic pre-prints such as arXiv. Hence, many applicants may face novelty and inventive step objections if the invention involves the application of known techniques to new domains or problems. For patent attorneys who are drafting new applications, it is recommended to perform a pre-filing search of such publication sources and ensure that the inventors provide a full appraisal of what is public knowledge.

Domain of Invention

A second issue is the domain of the invention. This may be seen as the context of the invention as presented in the claims and patent description.

Inventions that apply machine learning approaches to fields in engineering are generally considered more positively by the European Patent Office. These fields will typically either operate on low-level data that represents physical properties or have some form of actuation or change in the physical world. For example, the following domains are less likely to have features excluded from an inventive step evaluation for being “non-technical”: navigating a robot within a three-dimensional space; dynamic adaptive change of a Field Programmable Gate Array; audio signal analysis in speech processing; and controlling a power supply to a data centre.

On the other hand, inventions that apply machine learning approaches within a business or “enterprise” domain are likely to be analysed more closely. These inventions have a greater chance of claim features being excluded for being “non-technical”. These domains typically have an aim of increasing profit. The more this aim is explicit in the patent application, the more likely a “non-technical” objection will be raised. For example, the following inventions are more likely to have features excluded from an inventive step evaluation for being “non-technical”: intelligent organisation of playlists in a music streaming service; adaptive electronic trading of securities; automated provision of electronic information in a company hierarchy; and automated negotiation of online advertising auctions.

Exclusions from Patentability

A third issue that arises is that individual features of the claims fall within the exclusions of Article 52(2) EPC. In the field of machine learning and artificial intelligence systems, there is an increased risk of claim features being considered to fall into one of the following categories: mathematical methods; schemes, rules and methods for performing mental acts or doing business; and presentations of information. These will briefly be considered in turn below.

Mathematical Methods

The field of machine learning is closely linked to the field of statistics. Indeed many machine learning algorithms are an application of statistical methods. Academic researchers in the field are trained to describe their contributions mathematically, and this is required for publication in an academic journal. However, the practice of the European Patent Office, as directed by the Boards of Appeal, typically regards statistical methods as mathematical methods. In their pure, unapplied form they are considered “non-technical”.

Schemes, Rules and Methods for Performing Mental Acts

A claim feature is likely to be considered part of schemes, rules and methods for performing mental acts when the scope of the feature is too broad or abstract. For example, if a claimed method step also covers a human being performing the step manually, it is likely that the scope is too broad.

Schemes, Rules and Methods for Doing Business

Claim features are likely to be considered schemes, rules and methods for doing business when the information processing relates to a business aim or goal. This is especially the case where the information processing is dependent on the content of the data being processed, and that content does not relate to a low-level recording or capture of a physical phenomenon.

For example, processing of a digital sound recording to clean the recording of noise would be considered “technical”; processing row entries in a database of information technology assets to remove duplicates for licensing purposes would likely be considered “non-technical”.

Presentation of Information

Objections that features relate to the presentation of information may occur when the innovation relates to user experience (UX) or user interface (UI) features.

For example, a machine learning algorithm that adaptively arranges icons on a smartphone according to use may receive objections on the grounds that features relate to mathematical methods (the algorithm) and presentation of information (the arrangement of icons on the graphical user interface). As per Guideline G-II, 3.7.1, grant is unlikely if information is simply displayed to a user and any improvement occurs in the mind of the user. However, it is possible to argue for a technical effect if the output provides information on an internal state of operation of a device (at the operating system level or below, e.g. battery level, processing unit utility etc.) or if the output improves a sequence of interactions with a user (e.g. provides a new way of operating a device). Again, a technical problem needs to be demonstrated and the machine learning algorithm needs to be a tool to solve this problem.

Subfields of ML and AI

In certain subfields of machine learning and artificial intelligence, there is a tendency for Boards of Appeal and Examining Divisions to consider inventions more or less “technical”. This is often for a combination of factors, including field of operation of appellants, the history of research and traditional applications, and the background and public policy preferences of staff of the European Patent Office.

For example, machine learning and artificial intelligence systems in the field of image, video and audio processing are more likely to be found to have “technical” features that can contribute to an inventive step under Article 56 EPC. A convolutional neural network architecture applied to image processing is more likely to be considered a “technical” contribution that the same architecture applied to text processing. Similarly, it may be argued that machine learning and artificial intelligence systems in the field of medicine and biochemistry have “technical” characteristics, e.g. if they operate on data originating from mass spectrometry or medical imaging.

However, advances in search, classification and natural language processing are more likely to be found to have “non-technical” features that cannot contribute to an inventive step under Article 56 EPC. These areas of machine learning and artificial intelligence systems are often felt to be “technical” by the engineers and developers building such systems. However, it is a nuance of European case law that these areas are often deemed to have claim features that fall into an excluded “business”, “mathematical” or “administrative” category.

A recent example may be found in case T 1358/09. The claim in this case comprised “text documents, which are digitally represented in a computer, by a vector of n dimensions, said n dimensions forming a vector space, whereas the value of each dimension of said vector corresponds to the frequency of occurrence of a certain term in the document”. The Board agreed with the appellant that the steps in the claim were different to those applied by a human being performing classification. However, the Board concluded that the algorithm underlying the method the claim did not “go beyond a particular mathematical formulation of the task of classifying documents”. They were of the opinion that the skilled person would have been given the (“non-technical”) text classification algorithm and simply be tasked with implementing it on a computer.

What Should We Not Do?

Managers and executives of commercial enterprises are often habituated into selling innovations to a non-technical audience. This means that invention disclosures often describe the invention at an abstract “marketing” level. When an invention is described in a patent application at this level, inventive step objections are likely.

The fact that mathematical formulae may comprise excluded “non-technical” features is difficult for inventors and practitioners to grasp. Often equations at an academic-publication level are included in patent specifications in an attempt to add technical character. This often backfires. While such equations may be deemed “technical” according to a standard definition of the term, they are often not deemed “technical” according to the definition applied by European case law.

In general, objections are more likely in this area when the scope of the claim is broad and attempts to cover applications of a particular algorithm in all industries. Applicants should be advised that trying to cover everything will likely lead to refusal.

What Should We Do?

Chances of grant may be increased by ensuring an examiner or Board of Appeal member can clearly see the practical application of the algorithm to a specific field or low-level technical area.

Patent attorneys drafting patent applications for machine learning and artificial intelligence systems should carefully consider the framing and description of the invention in the patent specification. In-depth discussions with the engineers and developers that are implementing the systems often enable innovations to be described more precisely. Given this precision, innovations may be framed as a “technical” or engineering innovation, i.e. a technical solution to a technical problem. This increases the chance of a positive opinion from the European Patent Office.

Often features of an invention will have both a business advantage and a “technical” advantage. For example, a machine learning system that learns how to dynamically route data over a network may help an online merchant more successfully route traffic to their website; however, this improved method may involve manipulation of data packets within a router that also improves network security. A patent specification describing the latter advantage will have a greater chance of grant than the former, regardless of the actual provenance of the invention. A practitioner may work with an inventor to ensure that initial business advantages are distilled to their proximate “technical” advantages and effects. For cases where data does not relate to a low-level recording or capture of a physical phenomenon, it is recommended to ensure that any described technical effect applies regardless of the content of the data.

When considering exclusion for “mental acts”, a risk of a “non-technical” objection may be reduced by ensuring that your method steps exclude a manual implementation. Note that this exclusion does not necessarily prevent other objections being raised (see T 1358/09 above).

When drafting patent applications, it is also important to describe the implementation of any mathematical method. In this manner, pseudo-code is often more useful than equations. It is also important to clearly define how attributes of the physical world are represented within the computer. Good questions to ask include: “What data structures and function routines are used to implement the elements of any equation?”, “How is data initially recorded, e.g. are documents a scanned image such as a bitmap or a markup file using a Unicode encoding?”, “What programming languages and libraries are being used?”, or “What application programming interfaces are important?”.

Practitioners do need to be concerned with including overly limiting definitions within the claims; however, a positive opinion is more likely when specific implementation examples are described in the patent specification, followed by possible generalisations, than when specific implementation examples are omitted and the description only presents a generalised form of the invention along with more detailed mathematical equations.

To be successful in search, classification and natural language processing, one approach is to determine whether features relating to a non-obvious technical implementation may be claimed. This approach often goes hand in hand with a knowledge of academic publications in the field. While such publications may disclose a version of an algorithm being used, they often gloss over the technical implementation (unless the underlying source code is released on GitHub). For example, is there any feature of the data, ignoring its content, which makes implementation of a given equation problematic? If inventors have managed to reduce the dimensionality of a neural network using clever string pre-processing or quantisation then there may be an argument that the resultant solution is implementable on mobile and embedded devices. Reducing a size of a model from 3 GB to 300 KB by intelligent selection of pipeline stages may enable you to argue for a technical effect.

Do Not Believe The Hype?

Despite the hype, machine learning and artificial intelligence systems are just another form of software solution. As such, all the general guidance and case law on computer-implemented inventions continues to apply. A benefit of the longer timescales of patent prosecution is that you ride out the waves of Gartner’s hype cycle. In fact, I still sometimes prosecute cases from the end of the dotcom boom…

Computer-Related Board of Appeal Decisions from 2014 Case Law Summary

The European Patent Office has now published a case law summary for 2014 as Official Journal supplementary publication 4/2015. Sections I-C-4.1, I-C-5.1, II-A-1, and II-E-1.4 discuss case law that relates to computer-related inventions. The relevant passages are extracted and commented on below.

Skilled Person

T 407/11 held that the relevant skilled person in the context of providing computer-system users with operating assistance via a user interface (e.g. error messages or warnings) was an expert in software ergonomics concerned with the userfriendliness of human-machine interfaces rather than an expert in software programming or in computer technology in the strict sense.

The objective problem to be solved by that skilled person was to prevent a situation whereby the user’s action caused an electronic data-processing system to execute a called function differently from intended (or even to fail to execute it at all).

In the board’s view, however, the technical effect claimed in the application (simpler operation of an object-oriented user interface, facilitating initial use and subsequent familiarisation, especially for beginners or upgrading users, and so making the resulting method easier and more intuitive to learn) could not be considered a directly derivable consequence of the distinguishing features, because attributes such as “simpler operation” or “easy and intuitive familiarisation” were generally subjective, i.e. depended on the user’s individual preferences and experience or intellectual capabilities, while the classification of users as “beginners”, “upgraders” or “advanced” was generally based on a variety of criteria which were not clearly defined.

This suggests that providing objective definitions of technical effects (e.g. millisecond time savings) may help to support an inventive step under European practice. It also further indicates a need to avoid reference to “user”-based advantages.

Applications of Algorithms

In T 2035/11 the application mainly related to navigation systems that could be tailored to a user’s particular wishes. The focus of the application was on the route-planning functionality of a navigation system.

The board held that the subject-matter of claim 1 lacked an inventive step within the meaning of Art. 52(1) and 56 EPC. It noted that mathematical algorithms may contribute to the technical character of an invention only in so far as they serve a technical purpose (see e.g. decision T 1784/06). The purpose of the algorithm was the mere display of an optimal path to the user for cognitive processing. The user could act on the information, but did not need to.

As stated in decision T 1670/07, a technical effect may arise from either the provision of data about a technical process, regardless of the presence of the user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process.

In the case at issue, the data was produced by means of an algorithm and was not applied directly in a technical process, so neither possibility applied.

Warning on Generalisation

In T 2231/09 the patent in suit concerned a method of representing and analysing images. Claim 1 of the main request set out that “… at least one said descriptor element is derived using only a subset of pixels in said image.”

The board considered the expression “subset of pixels” to be problematic under Art. 84 EPC 1973 and stressed that, while a certain degree of generalisation may be permitted, features as claimed should make it possible to clearly identify features of embodiments that are covered by the terms of a claim. Moreover, the generalised subject-matter as claimed should make it possible to understand the technical problem to be solved.

When amending claim 1, the applicant had put forward a new interpretation according to which a “region” could mean the whole image, and a “subset” could correspond to all pixels of the region. The board considered this interpretation to be inconsistent with essential parts of the described embodiments, according to which a subset corresponded to only some of the pixels of a region. The subject-matter of claim 1 was thus unclear when interpreted in the light of the description.

The board also stated that the requirements of clarity and support by the description in Art. 84 EPC 1973 were designed to reflect the principle that the terms of a claim should be commensurate with the invention’s technical contribution to the art. Taking into account the description, the board regarded the division of the image into regions and subsets as essential for achieving the technical effect underlying the invention. Therefore, the subject-matter of claim 1 was not supported by the description. The board concluded that claim 1 did not comply with Art. 84 EPC 1973.

This indicates the need, when drafting claims for computer-related inventions, to provide clear and unambiguous definitions of terms used within the claims. This is especially important when features of the claims relate to abstract entities, e.g. data within a data processing system.

Added Subject Matter and Features without Technical Contribution

In T 1779/09 the board considered that the appellant had found itself exactly in the situation envisaged in decision G 1/93 (OJ 1994, 451). As emphasised in Headnote II of G 1/93, “a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Art. 123(2) EPC.” These principles were confirmed in G 2/98 (OJ 2001, 413) and G 2/10 (OJ 2012, 376). The board in the case at issue concluded that a limiting feature which generally would not be allowable under Art. 123(2) EPC could, under certain conditions, nevertheless be maintained in the claim of an opposed patent in the particular situation addressed in decision G 1/93. It then complied with Art. 123(2) EPC by way of a legal fiction. In the case at issue, the term “only” was introduced during the examination proceedings and successfully objected to under Art. 100(c) EPC in proceedings before the opposition division by the former respondent. Since the board considered the term to be truly limiting, its deletion would extend the protection conferred and thereby infringe Art. 123(3) EPC. However, the board held that the exclusive limitation did not influence the solution of the technical problem as understood from the application as originally filed, and hence provided no technical contribution to the claimed invention (see also decision T 384/91, Headnote II). It merely excluded protection of part of the invention described in the application, thus not giving any unwarranted advantage to the applicant. Claim 1 of the appellant’s sole request was therefore deemed to comply with Art. 123(2) EPC.

Case Law Review – T 2296/10

Case:

T 2296/10

Claimed Subject Matter:

OFDM-transmitting apparatus and method, and OFDM-receiving apparatus and method.

Comments:

This case provides an interesting consideration of technical prejudices.

The Appellant attempted to argue that technical prejudices of the company behind the closest prior art document (the BBC) meant that the claimed solution was not obvious.

The Board disagreed with the Appellant’s arguments stating (see 2.1.10):

In this regard, the board notes that, in general, cost considerations and technological preferences of a particular company (like the BBC in this case) cannot impose technical prejudices or uncertainties upon a technically skilled person such that he would be deterred from envisaging a technically sound and feasible solution for that reason alone. Otherwise, when analysing and interpreting the actual teaching of the closest prior art determined for the purpose of assessing inventive step according to the well-established “problem-solution approach”, internal experiences, beliefs, and preferences concerning technologies to be applied by the company from which that closest prior art originates would generally have to be taken into account. This would in turn mean that – to answer the question whether the skilled person starting out from the closest prior art would in fact arrive at the claimed solution – additional internal background information on the respective closest prior art (e.g. derived from witness statements from some employees as provided by the present appellant) would be necessary. In other words, the extent to which the notional skilled person in fact applies his skills in providing a solution to an objective technical problem would be unduly bound by such internal information (e.g. the expected infrastructure costs incurred by the BBC when proposing a change in its applied technology) at the filing date of an application instead of finding an appropriate solution to the objective problem posed. That would, however, definitely be incompatible with the problem-solution approach as generally applied.

Rather, the person skilled in a technical field (i.e. mobile communication networks in the present case) would try to seek a technical solution to an objective technical problem (i.e. choosing a certain pilot symbol pattern) under certain constraints (i.e. digital video distribution), starting with the closest prior art (i.e. document D1). However, based on the reasoning set out in points 2.1.12.1.1 to 2.1.92.1.9 , the board considers that said skilled person would arrive at the solution (i.e. using a DVB-T-based pilot symbol pattern) according to feature A) of claim 1 without exercising inventive skills.

[With thanks to Jake Loftus for help finding and reviewing these cases.]

Case Law Review – T 1602/09

Case:

T 1602/09

Claimed Subject Matter:

A computer system for managing relationships between brokers and traders in a trading network.

Comments:

The Appellant claimed that the invention solved a technical problem which arose in such systems, namely that a trader could not simply and easily control, i.e. prevent or permit, a computer terminal operated by a broker to send trading commands on behalf of the trader from the computer terminal via the network to the trading system.

The Appeal was dismissed by the Board.

The Board found that the problem formulation only made sense in the context of operations by a (non-technical) “active trader”, these being traders who wish to be able to supervise trade orders given to brokers. It was found that since the trading was computer-based the active trader would need to have access to the broker’s trading system. The skilled person was certainly aware that this made a log-on necessary. Equivalently, if the active trader for some reason was not logged on, the broker should not be allowed to trade. Ideally, the check should be automatic. These straight-forward considerations were deemed to lead directly to the subject-matter of claim 1.

[With thanks to Jake Loftus for help finding and reviewing these cases.]

Case Law Review – T 1192/10

Case:

T 1192/10

Claimed Subject Matter:

User interface with gesture recognition.

The subject-matter of claim 1 differed from the disclosure in the closest prior art document in that according to claim 1:

a) warning messages are output to the user instead of having only internal messages between different components,

b) a range of sampling periods, i.e. a period when the button is activated, is supervised,

c) a range of poses indicating ranges of pitch and roll angles of the input device with respect to the bottom plane on which the input device is positioned is supervised and

d) temporary button release when the button is deactivated and re-activated within a predetermined time causes another warning to the user.

Comments:

Feature (a) of outputting warning messages to a user instead of internal messages between different components was deemed to be technical, solving the technical problem of how to provide feedback to the user about internal states or identified conditions of the device, but notoriously known.

However, features (b) of supervising a range of sampling periods and (d) providing temporary de-activation of a button were deemed to be technical features that provided an inventive step over the cited art. This set aside an earlier decision of the examining division.

The examining division had argued that although the actual implementation of the specific validation criteria involved a technically skilled person, the definition of the expected operation (e.g. what motions and durations of the input are expected) was rather business-based, according to the intended purpose of the device and to design choices. This argument was not accepted by the Board who concluded that, whatever the reason for the definition of a gesture might be, the underlying ranges, rolls and angles are of a technical nature.

Case Law Review – T 0913/10

Case:

T 0913/10

Claimed Subject Matter:

Encrypting data within a database system based on a defined system role (security administrator, database administrator, and user administrator).

Comments:

The case provides an interesting discussion about the term “role”, e.g. as used in a computing sense e.g sysadmin, user, database admin.

The Board concluded that “that nothing in the claims or in the description can dispel the reasonable possibility that the definition of tasks to be distributed over three administrators is merely an organisational and hence non-technical issue, notwithstanding that it relates to a technical entity such as a database system”. The claims were then found to lack an inventive step based on this assumption.

[With thanks to Jake Loftus for help finding and reviewing these cases.]