Epo publishes revised guidelines on computer-implemented inventions electricity lessons 4th grade


The European Patent Office Guidelines 2018 were recently published on the European Patent Office (EPO) website. All substantial changes in the new Guidelines relate mainly to sections discussing the First Hurdle, the EPO equivalent to patent eligibility. grade 9 electricity unit review Although the First Hurdle can be overcome simply by adding the presence of a computer, the number, quality of and relationship between technical features are essential in dealing with the Second Hurdle, or inventive step. A thorough analysis of whether each claimed feature is technical, or not, is essential to claim drafting and prosecution of a computer-implemented invention at the European Patent Office and many also believe may help assessing eligibility and patentability before the United States Patent and Trademark Office. Thus, U.S. patent practitioners working with Computer-implemented inventions (CII) would do well to review the new EPO 2018 Guidelines.

The new Guidelines entered into force on November 1, 2018. Like the previous edition, this year’s Guidelines include substantial and valuable improvements with regard to guidance on the eligibility of computer-implemented inventions (CII). gas vs diesel engine These sections of the Guidelines have been discussed with the European Patent Institute (epi), in particular with the ICT Thematic Group of the European Patent Practice Committee within the epi. The EPO website includes a useful html index for the Guidelines, including those sections relating to computer-implemented inventions.

• Second Hurdle. All features contributing to the technical character are taken into account for assessment of inventive step, including mathematical method steps which contribute to the technical character of the invention. The inventive step is assessed by the well-established “Problem and Solution Approach for claims comprising technical and non-technical features” (see G-VII, 5.4), which has not undergone substantial changes.

It should be noted that each of the above examples are rather specific, since it is stated that a generic purpose is insufficient. power vocabulary words The Guidelines, however, fail to provide much clarity on the level of specificity required. However, in this situation we suggest relying on relevant case law (e.g. national gas average 2012 T1029/06) which states that use of meta-wording that includes the words “technical” or “physical” is insufficient, since otherwise anyone could argue that a claim was sufficiently technical by mere use of meta-language.

Concerning the contribution by way of specific technical implementation, a mathematical method also may contribute to the technical character of the invention independently of any technical application when the claim is directed to a specific technical implementation of the 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. Here also, a generic technical implementation must be avoided, and alleging that the mathematical method is algorithmically more efficient than prior art mathematical methods does not solve the problem. Indeed, we must remember that technicality is to be assessed independently of the prior art, according to well-established case law.

In application to a field of technology as well as specific implementation, merely specifying the technical nature of the data or parameters of the mathematical method may not be sufficient to overcome the First Hurdle, because a mathematical method can be fed with real data but still be an abstract method without a technical effect or purpose, such that it represents mere mental acts. c gastritis Artificial Intelligence and Machine Learning (G-II 3.3.1)

The 2018 EPO Guidelines for the very first time provide a section relating to artificial intelligence and machine learning, which are first defined as computational models and algorithms for classification, clustering, regression and dimensionality reduction. They are considered per se to be of an abstract mathematical nature, irrespective of whether they can be “trained” based on (real) training data.

Instead, the applicant or practitioner seeking protection in Europe in this field should establish a causal link to the technical purpose e.g. use of mathematical method in a heart monitoring apparatus for the purpose of identifying irregular heartbeats, classification of digital images, videos, audio or speech signals based on edges or pixel attributes, and avoid using expressions that may encompass cognitive aspects of data (e.g. textual content of a document).

In addition, although non addressed by the new Guidelines, expressions such as ‘neural network’, ‘artificial intelligence’ and ‘deep learning’ – although relatively well accepted and clear (eg., decision T1285/10 of the boards of appeal) – are not normally used in claims but mostly in the specification, as optimized models go well beyond these terms. Rather, buzzwords such as ‘trained recognizer’, ‘adapted model’, ‘learner component’ or even ‘determining’ an output (as in standard method steps) are often used in the claims and are further described in the specification. table d gaskets In addition, when more specific terms such as ‘neural network’ are used in the claims, they usually appear only in the dependent claims. Simulation, design or modelling (G-II 3.3.2)

For example, the computer-implemented simulation of the behavior of an adequately defined class of technical items, or specific technical processes, under technically relevant conditions qualifies as a technical purpose, as is the case of an electronic circuit subject to 1/f noise or of a specific industrial chemical process. q gastrobar dias ferreira This section of the new Guidelines makes it clear that lack of a final physical step of production of a product is not required for a simulation method to be patent-eligible.

This applies not only to simulation of behavior of a technical item but also in the context of computer-aided design of a specific technical object (product, system or process): determining a critical parameter such as a refractive index in an optical system or an operating parameter of a nuclear reactor constitute a technical contribution.

In drafting a method claim, the applicant or practitioner should avoid including steps that link achieving technical purpose to human decisions, as well as mere design-like features such as how to describe a multi-processor system in a graphical modelling environment. Schemes, rules and methods for performing mental acts, playing games or doing business (G-II 3.5)

A section dedicated to schemes and rules for abstract purposes such as mental acts, playing games or doing business was already present in previous versions of the Guidelines. However, in the new version, extensive and consistent treatment of the topic has been provided, in order to help applicants and practitioners identify eligible subject-matters in these fields that have historically low rates of allowance.

In this framework, it is important for practitioners and applicants to pay attention to claim language, in that it could encompass both a technical meaning and a non-technical meaning, e.g. terms like “system” or “means” will be looked at carefully, because a “system” might e.g. refer to a financial organization and “means” to organizational units if it cannot be inferred from the context that these terms refer exclusively to technical entities.

The new Guidelines specify that it may be necessary to refer to the specific features of the different entities in the environment and to define how they interact to ensure the presence of all essential features, unless this is not essential to performing the invention. electricity storage handbook The different entities participating in the distributed system can be claimed without incurring a non-unity objection, however it may happen that not all claimed entities are new and inventive. This is the case when for example an entity encodes information in a more efficient way, but an information-receiving entity decodes such encoded information in a conventional way: the information-receiving entity is normally neither new nor inventive. Further Comments

Applicants and practitioners may consider alternative solutions to the same technical problem and try to encompass both classical and AI steps in a claim, if the claim does not become too general. Alternatively, a separate patent application directed specifically to decision tree and/or AI methods may be filed, in order to prevent any design-around.

Finally, no change in the definition of the skilled person is specifically included in the new Guidelines, although this topic was discussed in the above-referenced conference. This leaves open issues such as whether the skilled person has AI tools to perform routine work and whether the skilled person can be substituted by a machine trained in the art, and further whether this can be fictional or should refer to a real state-of-the art machine.