Exploring the 2022 EPO Guidelines for Examination

The European Patent Office (EPO) recently published its Guidelines for Examination 2022, which come into force on March 1.

Compared to previous years, the volume of changes is much smaller, and this witnesses the effort by the EPO in past years to arrive at a more stable text of the Guidelines, particularly concerning the software patentability and biotech sections.

Yet some changes have been made, mainly to software patentability guidelines, as well as to other important sections, such as partial priorities and amendments to the description. Continuing the trend of past years, the Guidelines continue to be enriched with helpful examples.

We regrouped the changes under the following topics:

• Computer-implemented inventions;
• Bio-technological field;
• Partial priorities;
• Amendments to the description in view of the claims; and
• Miscellanea.

Computer-Implemented Inventions

The sections on computer-implemented inventions show important additions mainly relating to mathematical methods, artificial intelligence and most importantly simulations. The changes appearing this year 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.

Since the sections on computer-implemented inventions are scattered throughout some distant sections of the Guidelines, the attention of the reader is here drawn to the fact that the pdf text of Guidelines includes (at its end) a list of sections on the topic and the EPO website includes a useful html index for the Guidelines, with direct links to all these sections.

Mathematical methods (G-II 3.3)

Simulations have been removed from the list of mathematical methods giving technical contribution, they are treated separately (see below).

It has been specified that if steps of a mathematical method are used to derive or predict the physical state of an existing real object from measurements of physical properties, as in the case of indirect measurements, those steps make a technical contribution regardless of what use is made of the results.

Two new examples of specific technical implementation of mathematical methods bringing about technical character, and therefore eligibility, are given.

The first deals with the internal functioning of a computer system or network, 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.

The second relates to 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.

Simulations (G-II 3.3, 3.5.2 and 3.6.3)

A whole added part stems from last year’s decision G1/19, which we have commented on in our previous article on IPWatchdog. The added part closely but not verbatim follows the wording of the decision.

First of all, it is confirmed that computer-implemented methods of simulating, designing or modelling should be examined according to the same criteria as any other computer-implemented inventions (G-VII, 5.4, G 1/19) and that for establishing the presence of a technical effect, it is not decisive whether the simulated system or process is technical or whether the simulation reflects technical principles underlying the simulated system and how accurately it does so.

While computer implemented simulations having input or output representing physical realities are normally eligible, purely numerical simulations are not, unless the claimed subject matter:

• Relates to a specific technical implementation (as above mentioned);
• Implies an intended technical use of the data resulting from the simulation.

The Guidelines and decision G1/19 also speak of “potential technical effect”, meaning the technical effect that would be produced when the purely calculated data is used according to an intended technical use. A given example is data for controlling a technical device, wherein the claimed matter excludes other non-technical uses because the intended technical use is then inherent to the claimed subject-matter over substantially the whole scope of the claim.

Accuracy of a simulation does not normally contribute to eligibility, unless it has an influence on an already established technical effect beyond the mere implementation of the simulation on a computer.

The criteria set out by G1/19 apply equally if a computer-implemented simulation is claimed as part of a design process, e.g. designing an arrangement for loading nuclear reactor fuel bundles into a reactor core in order to maximize the amount of energy that is generated before the reactor fuel needs to be refreshed. Despite the fact that there is here an intended technical use, every other non-technical use (e.g. mental acts) must be excluded when claiming the design process, in order for it to be eligible. Another example is given (G-II 3.6.3), which deals with digital data that is used to control devices in additive manufacturing (AM), wherein the digital representation (e.g. CAD) of the product makes a technical contribution to the extent that it defines technical features of the fabricated physical product.

It is worth mentioning, in this regard, that in the new Guidelines the previous example on “numerical simulation of the performance of an electronic circuit subject to 1/f noise” has been substituted by another (positive and valuable) example of applied mathematical method. This stems from the fact that decision T1127/05 dealing with simulation of circuits was not relied on in the reasoning of G1/19.

Last but not least, the new Guidelines reflect the consequences of G1/19 on videogames (G-II section 3.5.2). Although the game world may evolve in accordance with numerical data and equations that model physical principles or pseudo-physical behavior, this is not sufficient for it to be eligible. For instance, merely predicting the virtual trajectory of a billiard ball shot by the player, even if highly accurate, fails to solve a technical problem beyond its implementation. In contrast, adjusting the step sizes used in the distributed simulation of bullets fired in a multi-player online game based on current network latencies produces a technical effect and is therefore eligible.

All in all, the additions are valuable and close enough to the landmark decision G1/19.

Artificial Intelligence (G-II 5.4.2.5)

A new, helpful example has been added to the list of examples in the mathematical method field. It relates to a method for coating a workpiece using a thermal spray coating process, whose parameters are controlled by a neuro-fuzzy controller. The example makes it clear how the same approach to computer simulation invention applies to subject matters where artificial intelligence means are used. In the example, the neuro fuzzy controller is deemed to bring about a technical effect but is rendered obvious by a prior art document.

Although an example with a positive outcome would have been appreciated, it must be said that such positive examples are not given in the case law.

Bio-Technological Field

The EPO Guidelines have also been amended in certain procedural and substantive aspects related to biotech patent applications, as in the following.

Deposit of biological material and sequence listing (A-IV 4 and A-IV 5)

When an invention involves the use of, or relates to, a biological material (such as a new bacterial strain, or an antibody-producing hybridoma) that is not publicly available and cannot be fully described on paper, in order to avoid later objections regarding the reproducibility of the invention the Applicant can supplement the patent description by depositing a sample of the biological material with a recognized depositary institution. The biological material must have been deposited before the filing date of the patent application or, if a priority is claimed, before the priority date. The patent application must indicate the filing authority, the accession number, and the date of deposit. In addition, if the biological material has been deposited by a person other than the Applicant, the depositor’s authorization to Applicant to refer to the deposit and the consent for the biological material to be made available to the public must also be provided. For direct European applications, such documents should be filed no later than the completion of the technical preparations for the European publication. The new EPO Guidelines now specify that, in the case of a Euro-PCT, the aforementioned document should be provided to the International Bureau before completion of the technical preparations for International publication.

With respect to patent applications that describe amino acid or nucleotide sequences, the changes made in the new Guidelines simply consist of a reference to the new WIPO standard ST.26 on sequence listings, which will apply to patent applications filed on or after July 1, 2022. The new Guidelines also specify that each amino acid or nucleotide sequence that extends over the minimum length defined in the applicable standard needs to be listed in the sequence listing, even if the sequence is only a fragment of another disclosed sequence.

Exclusions due to public order and morality (G-II 4.1, 5.2)

On the substantive side, an important change has been made in the section of the new Guidelines dealing with the inventions that are excluded from patentability on the grounds that their use would be contrary to ordre public or morality. Such exclusions cover the processes for cloning human beings, the processes for modifying the germ line genetic identity of human beings, the uses of human embryos for commercial or industrial purposes (including human embryonic stem cells), as well as, in certain cases, the processes for modifying the germ line genetic identity of animals. The new Guidelines now clarify the criteria to be adopted in the assessment of the exclusion of genetically-modified animals when the modification concerns the germ line. In this context, the new Guidelines refer to decision T 315/03, which ruled that, in order to assess the morality of the modification, it should be balanced, on the one hand, the likelihood that the modification will cause suffering to the animal, and on the other hand the likelihood that the modification will lead to results that represent a substantial medical benefit. Decision T 315/03 also introduced an additional criterion, namely a careful weighing-up of the animals suffering and the risks to the environment on the one hand, and the usefulness of the invention for mankind, on the other hand.

Antibodies (G-II 5.6.1, 5.6.2)

Last but not least, the section on antibodies has also been modified. The new Guidelines now acknowledge that the number of CDRs (complementarity-determining regions) through which an antibody must be defined in order for the clarity requirement to be met is not always and necessarily six (as was indicated in the previous version of the Guidelines), but less than six CDRs may be sufficient if the subject-matter of the claim is a specific antibody format that does not require six CDRs to interact with the antigen.

Partial Priorities

The EPO practice on assessing partial priorities has not changed but has been made clearer by stating, based on well-known decision G1/15 and G2/98 (the latter was previously not mentioned as such), that the “partial priority” refers to a situation in which only a part of the subject-matter encompassed by a generic “OR” claim is entitled to the priority date of a previous application.

In that case, the two corresponding embodiments enjoy corresponding, different effective dates, e.g. a priority date and a filing date.

Instead, the “AND” case combining the two embodiments can enjoy priority only when the combination is explicitly disclosed as such in the priority document or, as an exception, where one priority document contains a reference to the other and explicitly states that features from the two documents can be combined in a particular manner.

The test for assessing whether a partial priority arises is laid down in the current additions to the Guidelines and comprises the following steps:

• Assessing what subject matter of the priority is relevant for the prior art to the application claiming priority and disclosed in the priority interval (G2/98), since in the absence of any relevant subject matter the criterion of “the same invention” for priority is certainly not satisfied;
• Assessing whether or not the so identified subject-matter is encompassed by the claim of the application or patent claiming said priority;
• In the positive, the identified subject matter enjoys the priority while the rest of the claimed matter does not and there is de facto the “OR” situation above, even if not claimed as such.

It is to be remarked that the matter not enjoying the priority can itself be the priority for a subsequent application by the same applicant. In this connection, it is worth remembering that partial priority may also be transferable separately, and in this case the assignor is left with a limited right and may no longer keep claiming that partial priority.

Amendments to the Description in View of the Claims

The EPO has been extremely strict on the issue of clarity. One aspect of clarity concerns the final relationship between granted claims and the description. The Guidelines have specified that:

Any inconsistency between the description and the claims must be avoided if it may could throw doubt on the extent of subject-matter for which protection is sought and therefore render the claim unclear or unsupported under Art. 84, second sentence, or, alternatively, render the claim objectionable under Art. 84, first sentence.

Art. 84 reads:

The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

It is evident that the EPO interprets the first and second sentences of Art. 84 as being substantially the same thing. This does not seem to be correct, since if the claims already define the scope of protection, then very little has to be amended in the description. Moreover, the term “supported” is to be interpreted, in our opinion, as requiring the description to include examples and explanations of the claimed features and does not extend to requiring mirroring of the claims.

The Applicants do not like the EPO approach to clarity, and have complained about amending the description for grant, since this is cumbersome and very harmful in case of litigation, since unwanted restriction of the description could ensue, thus limiting the ability to react to the counterparty’s arguments.

This is maybe why the EPO has slightly softened the requirements in this regard with the 2022 Guidelines. Excision of parts is no more required with the exception of ineligible matter, which however can alternatively be marked as not being according to the claimed invention.

However, the need for marking examples falling outside the scope of the claims remains, with the Guidelines giving examples of “inconsistencies” between claims and description. One example is about a claimed electric motor when there are two embodiments in the description, the first being about an electric motor and the second being about a combustion engine. The problem generated by such a situation can be hardly understood by the Applicants in view of Art. 84 EPC, since the claims define the scope of protection, therefore it is already clear that the combustion engine is not intended as falling within the subject matter of the claims. Properly marking the examples however may not be so simple and devoid of consequences in litigation, certainly not to take advantage of the combustion engine but because the features are often intermingled in the explanation of the invention.

This is why Applicants are giving emphasis to a recent diverging decision, T1989/18, wherein the Board of Appeal concluded that there was no legal basis for the Examining Division to refuse an application based on the applicant’s decision not to amend their description (point 7 of the reasons notes that “Article 84 EPC cannot serve as a legal basis for the refusal” and point 12 notes that “Rule 48 EPC cannot serve as a legal basis for the refusal either”). In our recent experience, however, the Examining Divisions are rejecting arguments based on this decision because it is diverging and the EPO does not need to follow diverging decisions.

We hope that other Boards of Appeal will decide in the same way and that the EPO’s approach to consistency between claims and description undergoes a major change in the coming years.

Miscellanea

Briefly, it is worth just mentioning the following changes:

• Submissions in preparation of oral proceedings (Part E – Chapter VI, section 2.2): the entire section has been rewritten, with no substantial difference compared to last year’s version except that it now holds for any oral proceedings, i.e. both ex parte and inter partes The section has been broadened consistently with the leading case law;
• Terms such as “about”, “approximately” or “substantially” (Part F – Chapter IV, section 4.7): in its quest for clarity, the EPO has specified that these terms relate to production tolerance only; and
• Non-unity and dependent claims (Part F – Chapter V, section 3.2.4): a further example to grouping inventions is given in relation to multiple dependent claims.

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