EUROPEAN PATENT PROGRESS 2022
EUROPEAN PATENT PROGRESS
By Michael Jennings, Partner, AA Thornton
I think it is time for European Patent Attorneys (EPAs) to admit how fortunate we are. Despite huge challenges facing industry as a result of the global pandemic and shifting priorities and an unjustified war in Europe, we are seeing real improvements to the European patent system that will help us to meet industry’s needs.
This article is to share some of the good news from 2022.
LET THE GAMES BEGIN… WORKING WITH YOUR CHOSEN EPAS!
The opening of Europe’s Unified Patent Court in late 2022 (or early 2023) is expected to provide a more cost-effective European patent system that will reduce the number of inconsistent outcomes from different European courts. The Unified Patent Court (UPC) is an exciting opportunity for IP firms throughout Europe, especially for firms like AA Thornton that have well-integrated teams combining IP litigation experts and patent attorneys with vast experience defending and invalidating European patents.
On 22 February, the UPC Administrative Committee adopted Rules on the European Patent Litigation Certificate (EPLC), formally confirming that European Patent Attorneys in all EPC contracting states will be able to represent clients in the UPC. All EPAs who have appropriate training will be able to obtain an EPLC and will be able to help clients defend and enforce their European patents in the new court. This confirmation is very welcome. The official documents are available at https://www.unified-patentcourt.org/content/official-documents.
Patent proprietors and their competitors will welcome the freedom to choose who represents them in the UPC. We suggest that the UPC system will benefit from the involvement of UK firms—not only because of the acknowledged high standards of UK-based EPAs, but also because the Rules of Procedure of the UPC were strongly influenced by UK court procedures.
Although the opening of the UPC and availability of the Unitary Patent will be the most significant events for Europe’s patent system, we should recognize other progress that has already been made in 2022.
PREDICTABLY HIGH HURDLES
The European Patent Office (EPO) has become one of the most demanding patent offices in the world, but it is also one of the most predictable. That predictability allows us to tell our clients what outcomes to expect (i.e., what claims will eventually be allowed and whether an opposition or appeal is winnable) and that enables good decisions to be made throughout the patent process. In the UK, we also benefit from a very cost-effective and similarly predictable national IP office.
Let’s be honest, patent office predictability makes patent attorneys look good to our clients We become trusted advisors because the strategies we recommend achieve the outcomes we tell our clients to expect, so let’s acknowledge the importance of consistent patent office practice in enabling us to recommend the best strategies and achieve the outcomes our clients are paying us to achieve.
I thank the EPO and UKIPO for making us look good, with their investment in examiner training and their helpful examination guidelines, and for working closely with us to achieve the “right” outcomes—i.e. patent claims that are novel and inventive and supported by the description, and an effective European patent system.
UPDATED GUIDELINES AND CONSULTATIONS
We applaud the EPO’s and UKIPO’s investment in public consultations and in updating their examination guidelines.
In early February, the EPO published a preview of its 2022 Guidelines for Examination. These guidelines came into effect on 1 March 2022, as reported here: https://www.aathornton.com/2022-updates-to-epo-guidelines-for-examination/.
Some noteworthy updates are summarized below, focussing on the recent updates for mathematical methods and computer-implemented inventions, which highlight the EPO’s willingness to listen to its customers and its efforts to reflect recent case law.
CONFIRMATION ON PATENTABILITY OF MATHEMATICAL METHODS
In 2018 the EPO set out some principles for assessing patentability of mathematical methods, noting that these principles will be applied to many artificial intelligence inventions such as machine learning algorithms. They noted that:
“A mathematical method may contribute to the technical character of an invention, i.e. contribute to producing a technical effect that serves a technical purpose, by its application to a field of technology and/or by being adapted to a specific technical implementation .” In 2021, we recommended a specific clarification of the patentability of “specific technical implementations”, based on helpful wording from the EPO Enlarged Board of Appeal decision in case G1/19, and we requested some positive examples. The EPO has given us both in the 2022 Guidelines for Examination. The clarified wording is shown below, with the new wording underlined:
“Technical implementations
A mathematical method may also 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 system or network (T 1358/09, G 1/19). This may happen if the mathematical method is designed to exploit particular technical properties of the technical system on which it is implemented to bring about a technical effect such as efficient use of computer storage capacity or network bandwidth.
For instance, the adaptation of a polynomial reduction algorithm to exploit word size shifts matched to the word size of the computer hardware is based on such technical considerations and can contribute to producing the technical effect of an efficient hardware implementation of said algorithm. Another example is assigning the execution of data-intensive training steps of a machine-learning algorithm to a graphical processing unit (GPU) and preparatory steps to a standard central processing unit (CPU) to take advantage of the parallel architecture of the computing platform. The claim should be directed to the implementation of the steps on the GPU and CPU for this mathematical method to contribute to the technical character.”
This not only shows that the EPO welcomes recommendations for improvements, it also provides a clearer framework for the patenting of implementations of mathematical methods which achieve technical effects by virtue of an adaptation of the method to the particular constraints or capabilities of the computer system or network.
UPDATES FOR COMPUTER SIMULATION, DESIGN, AND MODELLING
In addition to the updates on computer-implemented mathematical methods, the 2022 Guidelines have also been updated to reflect the EPO Enlarged Board of Appeal’s (EBA’s) reply to a set of questions on patentability of computer simulation inventions in case G1/19. In G1/19, the EPO’s Enlarged Board of Appeal explained that computer simulation should not be treated as a “special case” of computer implemented invention, and so computer-implemented methods of simulating, design or modelling will now be examined in the same way as other computer-implemented inventions.
In particular, patentability may be provided by a simulation method’s interactions with the “real world” outside a computer, such as if a patent claim recites measurement of technical parameters as inputs to a simulation method, or if the claim recites output of control signals for controlling some physical apparatus or a technical process.
As well as these direct links with an external physical reality, patentability may also be provided for a simulation invention by claimed processing steps within a computer, if the underlying models and algorithms are adapted to the internal functioning of a computer system or network in which they are implemented, consistent with the approach for mathematical methods that is mentioned above. The EBA’s decision G1/19 and the 2022 Guidelines updates provide a helpful reminder of the criteria for patentability of computer-implemented inventions. This reminds us of the patent drafting practices that will maximize success at the EPO:
• We must tell our story within the patent specification – explain how new features solve technical problems (“how the differences make a difference”).
• For European success, it is helpful to: identify technical problems and describe the features (and interactions between claim features) which contribute to solving the problems and which provide technical effects/advantages. All features which contribute to technical effects are considered when assessing inventive steps, and other features are disregarded.
• EPO case law & Guidelines provide helpful examples of technical features and technical effects.
• The specification must include sufficient information for the invention to be worked by a skilled person or team.
• Ask inventors to explain implementation details that solve technical problems, and not only high-level functionality (describe the “technical invention within the invention”). For inventions using machine learning and other mathematical methods and for computer simulation inventions:
• Describe inputs – e.g., measuring parameters or otherwise selecting/generating a set of training data for training an AI system to determine weighting values of a neural network.
• Describe outputs – e.g., control signals and applications in the real world – provide basis for claims that are functionally limited to a technical purpose when this is possible.
• Describe processing and communications steps.
• Claims may need features of the technical implementation (where a method takes account of the constraints and capabilities of computer system/network) to satisfy the requirement for technical character, especially in the absence of real world interactions.
• For all computer-implemented inventions, tell a complete story in the specification about the technical problems and all the technical features that contribute to solving the problem. For AI/ML, ensure the result is replicable from the specification.
• This helps with patent eligibility, inventive step, and sufficiency:
o EPO requires technical effects / technical character for patent eligibility and for inventive step (Article 52(2) and Article 56 EPC);
o EPO strictly rejects any subject matter added after filing (Art 123(2) EPC)
o EPO has been raising more insufficiency objections in the last 2 years (Art 83 EPC)
• EPO examiners will only allow amendments that are directly and unambiguously derivable from the as-filed specification, and are much more receptive to inventive step arguments that are based on the specification.
NEW EXAMPLES INVOLVING MATHEMATICAL METHOD STEPS
As well as the above summary of patentability principles, the EPO’s 2022 Guidelines for examination include two new examples of the assessment of inventive step for claims that include a mixture of technical and non-technical features. This can be found in the Guidelines at Part G, Chapter VII, 5.4.2.4 and 5.4.2.5.
The example at G-VII, 5.4.2.5 steps through the assessment of inventive step for a technical application of artificial intelligence—specifically the use of a computer-implemented mathematical algorithm to control an industrial process. The usefulness of this example is its confirmation that a computer implemented mathematical method step can contribute to the technical character of a claimed invention when the claims are functionally limited to the control of an industrial process. This is consistent with the EPO’s comments on patentability of “specific technical applications” of mathematical methods in Guidelines G-II, 3.3.
The fact that the mathematical method steps can contribute to technical character is significant because the EPO only considers features that contribute to technical character when assessing inventive step.
The second new example at G-VII, 5.4.2.4 of the EPO’s Guidelines assesses a computer-implemented method of determining areas in which there is an increased risk of condensation for a surface in a building. The example claim includes mathematical steps and a presentation of information step. Since the mathematical steps are used to predict the physical state (condensation) of a real object (the surface), from measurements of physical properties (IR image, measured air temperature and relative air humidity over time), they contribute to a technical effect serving a technical purpose. So they are potentially patentable.
However, the use of colour to indicate to a user which areas are at increased risk of condensation was considered to be a subjective presentation choice without a technical effect, which does not contribute to technical character and inventive step.
FURTHER INFORMATION
For further information on these and other changes to the EPO’s Guidelines, please refer to the short report on AA Thornton’s website at https://www.aathornton.com/2022-updates-to-epo-guidelines-for examination/ or email [email protected].
We believe this combination of updates will help EPO examiners and applicants to reach a shared understanding of European patentability requirements for computer-implemented inventions, including for the rapidly expanding applications and implementations of machine learning and computer simulation and for quantum computing algorithms that are adapted to the quantum systems and hybrid systems on which they will run.
UK NATIONAL UPDATES
The UKIPO has also been consulting its users, and updates to the UKIPO’s Manual of Patent Practice are expected soon in 2022. This will include guidance on how to apply current UK law when assessing patentability of inventions relating to artificial intelligence. We will be happy to share this news as soon as we receive UKIPO approval later in 2022 and will be happy to summarize the work we are doing with the UKIPO on behalf of CIPA.
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Author profile:
Mike Jennings is a European Patent Attorney and a partner at AA Thornton in the UK – a specialist IP firm whose patent team was ranked as a “top tier” team by Legal500 in 2022. He is a member of the quality working group of SACEPO (the Standing Advisory Committee before the EPO), and Vice Chair of CIPA’s Computer Technology Committee, and a member of AIPPI’s Standing Committee on IT & Internet. His contributions to IPOA include membership of the AI & Emerging Technologies Committee and the European Practice Committee. He is frequently invited by CIPA to present on patenting issues for computer-implemented inventions.