EPO’s Guidelines for Examination 2021: Getting into Computer-Implemented Inventions

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The Guidelines for Examination 2021, published by European Patent Office (EPO) came into force on March 1. Through these guidelines, a detailed explanation of the substantive and formal requirements is maintained. Few changes help keep up an effective stable text of the guidelines. Let us discuss some of the important changes that are done for Computer-implemented Inventions and Procedural matter.

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The guidelines bring some changes to the computer-generated inventions after substantial discussion with the European Patent Institute (EPI), in particular with the Information and Communications Technology (ICT) Thematic Group of the European Patent Practice Committee within the EPI. The guidelines discuss the clarity of terms being used in the computer-implemented inventions concerning this as being a fast-moving field. The Guidelines of 2019 introduced a paragraph that recited, “special attention needs to 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 in the application itself and/or in relevant prior art documents, as this may be an indicator that the terms have no well-recognized meaning and may leave the reader in doubt as to the meaning of the technical features to which they refer, which may lead to findings of lack of technical character of the claims.”

Seeing the nature of computer-related inventions, it becomes dubious to understand some of the “well-recognized” meaning, due to the non-availability of any established dictionary in the field. Due to such ambiguity, the current guidelines remove the above-mentioned paragraph. (G-II 3.3)

The guidelines also tried to provide a better explanation of the functional and cognitive data along with the clear statement that “A data structure or format contributes to the technical character of the invention if it produces a technical effect.”  The guidelines while specifying the technical contribution specify that “a data structure or a data format may have features which may not be characterized as cognitive data (i.e. not for conveying information to a user) but which nevertheless do not make a technical contribution. For example, the structure of a computer program may merely aim at facilitating the task of the programmer, which is not a technical effect serving a technical function.” (G-II 3.6.3)

These entail in themselves two expressions that are “production of a technical effect” and “existence of a technical effect” that is used in the guidelines together but it seems that both have different meanings where the existence of technical contribution makes it more generic.

The guidelines have changed the explanation of the database management system (G-II 3.6.4) providing it a new definition that “database management systems are technical systems implemented on computers” and that “features specifying the internal functioning of a database management system are normally based on technical considerations”. This definition raises the question of whether all the features implemented in database management make a technical contribution. To this, the guidelines also provide the difference in the explanation of the functional and cognitive elements. The difference provides that if a method of estimating relevance or similarity relies solely on non-technical considerations, such as the cognitive content of items to be retrieved, purely linguistic rules, or other subjective criteria, the method does not make a technical contribution. Automatic linguistic analysis, on the contrary, normally involves technical considerations, if it has a technical effect. Retrieval based on the similarity of meaning of terms is subjective, but optimizing the execution time of structured queries in a database management system is a technical effect. The consideration being made for the database management system has also been made for the User Interfaces (G-II 3.7.1).

With respect to the Euro-PCT Applications, the guidelines bring some changes concerning the filing of the application. Rule 20.5bis states that the erroneously filed application can be corrected by the applicant. The EPO through this guideline provides that this provision is partially incompatible with the current legal framework under the EPC and will therefore not be fully applicable in proceedings before the EPO as receiving and designated/elected Office. This means that the EPO will change the filing date with that of the filing of the correct documents and the wrong document will not be considered, giving the applicant time to reply on keeping the original document.

Through this guideline, the EPO has also specified the procedure for oral proceedings, setting up the rule of the same. The oral proceedings in the examination proceeding will be held by video conference unless specified that it is necessary to take direct evidence. Situations like having a visual impairment preventing the representative from oral proceeding or involving the demonstration or inspection of an object.  The guidelines re-drafted the section on the unity of invention concerning the reasoning of the Examiner and objecting for avoiding the unwarranted division of an application.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back Global Patent Filing us at support@globalpatentfiling.com.

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