Patenting Computer Implemented Inventions at the EPO: Part One

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Patenting Computer Implemented Inventions at the
EPO Part One
31st October 2021 By Stuart Clarkson, Partner
and Frances Wilding, Partner
In this first of two articles, we summarise our
recommendations for drafting patent applications
for inventions concerning software and
algorithms. As these are subject matter areas
that have gained a reputation for being difficult
to successfully prosecute before the European
Patent Office (EPO), we aim to provide some
helpful tips to increase the chances of these
applications granting before the EPO.
What kinds of software can be patented at the EPO?
EPC Article 52, relating to what constitutes a
patentable invention, states that mathematical
methods and programs for computers are not
inventions to the extent that the claims relate
to this subject matter as such. Much case law
has been and continues to be the focus of what
those two words, as such, mean but it is
established in our case law that if the
invention is technical, then it does not fall
within the exclusion. Therefore, the conclusion
is that only technical subject matter is
patentable. However, this effectively moves the
discussion from how the words as such are to be
understood to what does/does not constitute a
technical invention. At the EPO, a
computer-implemented invention (CII invention)
is one which involves the use of a computer,
computer network or other programmable apparatus,
where one or more features are realised wholly
or partly by means of a computer
program. Artificial Intelligence (AI)/Machine
Learning is always computer implemented, and the
EPO considers AI to be a mathematical
method. The most recent March 2021 edition of
the Guidelines for Examination in the EPO
specifically addressed these kinds of inventions
and the EPOs practice for AI and
machine-learning Artificial intelligence and
machine learning are based on computational
models and algorithms for classification,
clustering, regression and dimensionality
reduction, such as neural networks, genetic
algorithms, support vector machines, k-means,
kernel regression and discriminant analysis.
Such computational models and algorithms are per
se of an abstract mathematical nature,
irrespective of whether they can be trained
based on training data. Hence, the guidance
provided in G-II, 3.3 generally applies also
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to such computational models and algorithms
(Guidelines for Examination in the EPO, Chapter
G-II, 3.3.1). Although CII subject matter can be
patented, the case law about what exactly is
technical (and therefore patentable) is complex.
However, the EPO has clarified that an invention
can be technical in two different ways
(dimensions) Dimension 1 a feature is
particularly adapted for a specific technical
implementation (in the sense that the design of
the feature is motivated by technical
considerations of the internal functioning of a
computer). For example, a claim may improve the
inner workings of the AI algorithms themselves,
e.g. in hardware of software hierarchy. For this
dimension, an AI algorithm needs to be adapted
for a specific implementation in a computer and
therefore needs to be motivated by
considerations of the internal functioning of a
computer. Dimension 2 a feature has a technical
application to a field that the EPO deems
technical (the feature thereby gains technical
status by virtue of its application in a
technical field e.g. applied AI to finding a
new chemical composition or to image
processing). For this dimension, an AI algorithm
needs to be adapted for a particular technical
application, for example to solve a particular
technical problem in a technical field. Thus,
either the invention must fundamentally make a
computer better, or it is applied to a specific
field of technology considered technical. In the
latter case, there is a large body of complex
case law as to what is, and what is not, a
technical area.
How to push a draft AI application in the right
direction for grant
Only features which are both inventive and viewed
by the EPO as having a technical contribution
can confer an inventive step before the EPO. This
makes drafting an application which is suitable
for the EPO in this area a question of
distinguishing over the prior art in a way which
is deemed technical.
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• So we need the right kind of technical detail in
  the application at the start to help us. It is
  of course necessary to include a description of
  all the standard software and hardware that is
  used in the invention. However, emphasis should
  be placed on a full disclosure of the parts of
  the software and/or hardware that distinguish
  over the prior art. For AI in particular, if the
  invention is in the training/learning phase for
  example, you need to provide as much detail as
  you can squeeze out of the inventors to explain
  everything that is new in that phase. Also, for
  inventive step at the EPO, it is very useful to
  add advantages of the invention details into the
  specification at the drafting stage, because
  inventive step arguments can be based on these
  advantages.
• Although a mathematical method must serve a
  technical purpose to be deemed
• technical, a generic purpose (such as
  controlling a technical system) is not
  sufficient the purpose must be specific.
  Furthermore, the claim should not define a
  technical purpose so broadly as to be seen by
  the EPO as administrative.
• Some examples of what the EPO considers to be
  technical purposes are
• digital audio, image or video enhancement or
  analysis
• separation of sources in speech signals, speech
  recognition
• encoding data for reliable and/or efficient
  transmission or storage (and corresponding
  decoding)
• compilation of software
• encrypting/decrypting or signing electronic
  communications
• facilitating data access using data structures
  (although we consider this a borderline case)
• In contrast, areas generally viewed by the EPO as
  not technical are
• inventions related to cognitive data (of interest
  to humans) rather than functional data (related
  to a machine)
• output not fed to a machine/technical process
• anything that seems linguistics, or business or
  admin related

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• user input are more likely to be deemed to have a
  technical character than those solely concerning
  data output and display. On the other hand,
  features concerning the graphic design of a menu
  (such as its look and feel) which are determined
  by aesthetic considerations, subjective user
  preferences or administrative rules do not
  contribute to technical character. However, a
  claim feature concerning a GUI that assist(s)
  the user in performing a technical task by means
  of a continued and/or guided human-machine
  interaction process has technical character
  (Guidelines for Examination, Chapter G-II, 3.7).
• Example CII claim forms that are accepted by the
  EPO are
• A computer-implemented method comprising steps A,
  B,
• o e.g. A computer-implemented image processing
  method of training (or evaluating, or operating)
  a neural network, comprising steps
• A data processing apparatus/device/system
  comprising or a processor configured to perform
  the method of claim 1
• A computer program comprising instructions which,
  when executed by a computer, carry out the
  method of claim 1
• A computer-readable medium comprising
  instructions which, when executed by a computer,
  cause the computer to carry out the method of
  claim 1
• See EPO Guidelines for Examination F-IV, 3.9.1
  Claims directed to computer- implemented
  inventions

The EPOs approach to mixed-type inventions
Many AI applications will contain both technical
and non-technical features since they relate to
mathematical algorithms (non-technical) which are
computer-implemented (technical). Here, we look
at how the EPO applies the problem and solution
approach to these types of claims. This is
referred to as the COMVIK approach (as
introduced in T 641/00) and is illustrated in
the below flowchart.
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According to this approach, the EPO will first
assess the claim for technical character.
However, this hurdle is easily overcome by
specifying that the method is computer-
implemented. Next, the EPO will consider whether
the claim has any technical features, dividing
the claim into those features deemed technical
and those that are not. A feature can be
technical according to one of the two dimensions
defined above. Therefore, the term technical
features also includes features which, when
taken in isolation, are non-technical but do
in the context of the claimed invention help to
produce a technical effect (e.g., features of a
machine learning algorithm used to identify an
image). If the claim includes non-technical
features, these features may later be used in the
formulation of the objective technical problem
as part of what is given to the skilled
person, in particular as a constraint that has to
be met. For this reason, it is best to beware of
including too many non-technical features into
the claims. Then, as per the standard
problem-solution approach, the Examiner will
identify the differences between the claim and
the closest prior art, and the technical effects
of these differences in the context of the claim
as a whole. If all of the differences make no
technical contribution when the EPO can raise an
inventive step objection. For example, a
computer-implemented machine learning method
claim for training a neural network may have
differences over the prior art in the training
parameters, but if they are not linked to a
technical application, they will make no
technical contribution. Using the differences
that do make a technical contribution, the EPO
will formulate an objective technical problem.
The non-technical features of the claim that
serve no technical purpose may be used to
formulate this problem. The Examiner will then
consider whether or not the claimed invention,
starting from the closest prior art and the
objective technical problem, would have been
obvious to the skilled person. For example, if a
training algorithm for a machine learning method
is not linked in the definition to a technical
application and the whole claimed method is
therefore considered to be non-technical, the
objective technical problem might simply be to
implement such a method. At that point any
general definitions of computer implementation
in the claim will not be considered inventive,
and the Examiner may well cite notorious
computer systems against these features. If the
Examiner considers that it would not have been
obvious, no inventive step objection is raised.
Summary and practice points
Despite some notoriety in terms of the perceived
difficulty of successfully prosecuting these
types of applications before the EPO, various
types of AI can be patented. In
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order to clear the first hurdle to patentability,
a claim must possess technical character this
is easily achieved e.g. by claiming a
computer-implemented method or process. The
second hurdle then relates to assessing the
inventive step of the claimed subject- matter
according to the COMVIK approach, wherein the
distinguishing features are assessed in terms of
whether they solve a technical problem. In order
to maximise the chances of success for clearing
this hurdle, the application and the claims
should ideally be drafted with this approach in
mind, and should ideally include as much detail
as possible regarding any technical effects
achieved by specific claim features. Even
features in the claims or description which may
not seem to be very important during drafting,
since they seem to be merely additions to the
central aspects of the invention, may later turn
out to be crucial for assessing inventive step in
view of the particular prior art documents cited
by the Examiner. If the originally filed
application includes some technical effects even
for these fall-back features, it will be easier
to come up with a convincing COMVIK-style
argument on why these additional features provide
a technical contribution over the prior art. As
explained earlier, a technical contribution can
occur in either one of the two dimensions
specific technical implementation or technical
application. Further, it is advantageous to
present the application in a technical context
and to put the emphasis less on any business or
user interaction aspects of the invention, but to
focus on description of technical features which
differ from the prior art and technical hurdles
that are overcome by the invention. Ideally, the
description would also include some examples of
real-life applications of the inventive method or
AI system, and include system or device claims
directed at obviously technical apparatuses that
may also be beneficial for framing the whole
invention in a context that is more likely to be
accepted as technical by the EPO Examiner. In
our next article we will examine sufficiency as
applied to AI inventions, including the various
types of data that may need to be included in the
application to fulfil this requirement. We will
also look at what can be learned from the
decision G 1/19 (concerning computer
simulations) and what can be learned from later
decisions that have cited G 1/19.
This is for general information only and does not
constitute legal advice. Should you require
advice on this or any other topic then please
contact hlk_at_hlk-ip.com or your usual Haseltine
Lake Kempner advisor.
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