The European Patent Office Guidelines are updated annually. The latest update came into force on 1 November 2019, and contains significant changes in relation to how the EPO examines inventions relating to artificial intelligence, selection inventions and inventions in the field of biotechnology. Practitioners need to be aware of these changes in order to obtain meaningful claims in these areas.
The Guidelines for Examination in the European Patent Office (“the EPO Guidelines”) are important as they provide instructions to the Examiners in their handling of European Patent Applications. They contain guidance as to how the EPO deals with substantive as well as procedural aspects of examination, and represent a distillation of how significant decisions of the Boards of Appeal of the EPO are implemented in practice.
Although the EPO Guidelines are not legally binding, they are very influential on Examiners, and they are frequently referred to by attorneys in responding to objections raised during examination, and in preparation of appropriate claim language to pre-empt such objections. In particular, the EPO Guidelines give examples of how specific types of invention may be claimed, and how Examiners apply tests in order to evaluate patentability in different technical fields.
The most recent revision to the Guidelines occurred on 1 November 2019. There are a number of changes, some of a procedural nature, and others having a substantive aspect. In this article, I focus on the substantive changes, and briefly summarise the other revisions.
Technical character – inventions employing artificial intelligence
The section of the Guidelines dealing with inventions in the field of artificial intelligence was introduced in the previous revision. It was clear that classification, clustering, and other models and algorithms are per se of an abstract mathematical nature, irrespective of whether they can be “trained” based on training data. Consequently, they are excluded from patentability at the EPO.
The revisions clarify, however, that if a mathematical method produces a technical effect when it is applied to a field of technology and/or adapted to a specific technical implementation, the computational efficiency of the steps affecting that established technical effect is to be taken into account when assessing inventive step. This is an indication that EPO is prepared to recognise contributions that machine learning can make to patentable inventions.
Special attention must be paid to the clarity of terms used in claims related to mathematical methods. This is of particular importance where such terms are used in significantly different ways to relevant prior art documents. This may be indicative of a lack of a generally accepted technical meaning, which may lead to findings of lack of technical character of the claims.
Especially in the fields of chemistry and pharmaceuticals, selection inventions, namely those which concern the selection of a subrange of a parameter from the broader disclosure of the prior art, are important. Formerly the EPO applied a three-step test for assessing the novelty of a sub-range, the final step of which was establishing that the selection was a “purposive” one, i.e. the selection had a purpose, utility or effect that was not shared by the broader class.
In light of a decision of the Boards of Appeal (T261/15), the requirement for a purposive selection has been dropped, and it is now sufficient merely to demonstrate that the sub-range is narrow, and far removed from any specific examples and end-points in the prior art. Assessment of purpose, utility or effect is done under inventive step.
This change is beneficial to applicants, as it makes it easier to demonstrate novelty of claim that includes a sub-range, particularly in chemistry and pharmaceutical cases.
“Obvious to Try” Test
One of the earliest cases of the Boards of Appeal of the EPO concerned the assessment of inventive step, and in set out that the proper question to be asked was not whether the skilled man could have could have tried the technical solution framed by the claims, but whether they would have done so in expectation of success.
The Guidelines previously stated that the question to be asked was whether the skilled person would have modified the closest prior art in the “hope of solving the objective technical problem”. Clearly, hope is a very different emotional state from expectation. The revisions clarify that the skilled person must have a degree of confidence of success when embarking on the proposed solution, rather than a try-and-see attitude. This change is also favourable to applicants, as the Examiner must demonstrate why the skilled person was motivated to try the proposed solution, as well as demonstrating that they would have expected success.
A new section of the EPO Guidelines directed to biotechnological inventions also stresses the difference between a “reasonable expectation of success” and a “hope to succeed”. Specifically, if researchers are aware when embarking on their research that, in order to reach a technical solution, they will need not only technical skill but also the ability to make the right non-trivial decisions along the way, this cannot be regarded as a “reasonable expectation of success”.
Clarity – Parameters and Purposes
The section dealing with parameters and their use in claims has been updated in light of Board of Appeal decision T849/11. The EPO Guidelines now state that the use of parameters in claims should be self-contained, in that the skilled person must not need to resort to studying the description in order to divine their meaning.
A significant change has been made to the portion of the EPO Guidelines dealing with means-plus-function features. Ordinarily, any prior art feature suitable for carrying out the function of a means-plus-function feature will anticipate the latter. The example given in the EPO Guidelines is that the feature “means for opening a door” is anticipated by both the door key and a crowbar.
An important exception to the rule is where the function of the means-plus-function feature is carried out by a computer. In such cases, are interpreted as means adapted to carry out the relevant steps/functions, rather than merely being suitable for carrying them out.
Other changes relating to procedural aspects of the work of the EPO are also made. These include the fact that certain procedural acts, such as payment of some fees, can be made by a representative other than the representative of record, which will be useful for applicants making use of validation companies to handle the EPO grant stage. The section on PCT applications entering the European Regional Phase has also been re-written, giving further detail on the steps and options.
 European Patent Convention, Article 52 (2) (c)