Article 52(2) of the EPC lists a number of inventions exempt from patentability including i) scientific theories and mathematical methods, ii) aesthetic creations, iii) schemes, rules or methods for performing mental acts or computer programs, and iv) presentations of information. As a result, computer-implemented inventions (CII’s) can be exempt from patentability since computers inherently include subject matter exempt from patentability under Article 52(2).
The EPO guidelines for examination act as a guide for Applicants and Examiners alike in this field. In the old guidelines, in force from November 2017, a criterion exists to address the patentability of computer programs and algorithms whereby a program or algorithm comprising a scientific or mathematical concept must provide a further technical effect in order for the program or method to be patentable. For example, if a program enables a user to perform a technical function beyond the physical interactions considered normal within a computer system, then that program is deemed to provide a further technical effect. However, where a program does not provide a further technical effect, for example where a program only provides a subjective output based on a user’s preferences, the program is deemed a non-technical feature and the program is excluded from patentability.
Although the criteria for patentability in the 2017 guidelines for examination enable many CIIs to be patented, because of advances in computing such as machine learning, data processing, simulation and hardware architecture, which may not fulfill the above criterion, the EPO has updated its guidelines for 2018 to include examples of further technical effects from previous case law in order to help clarify technical contributions of CIIs required for patentability. These new guidelines are in force from 1 November 2018. Further technical effects of note in the updated guidelines are: programs having a specific technical effect on the architecture of hardware within a computer, such that the program is adapted specifically to the architecture of the hardware, providing a further technical effect; and computer programs for controlling the internal components of a computer, such as memory allocation. Such examples of further technical effects may have previously been considered to be normal technical functions of a computer.
The updated guidelines further expand on further technical effects by adding guidelines on specific technical implementations and technical purposes required for the patentability of mathematical methods and programming for computer-implemented inventions, and add detail on technical character requirements for data structures.
The updates to the EPO guidelines for examination provide detailed sections on the technical character required for patentability of computer-implemented inventions. The updated guidelines help to clarify patentable areas of computing that should consequently encourage more patent applications for computer-implemented inventions to be filed at the EPO. Furthermore, the updated guidelines should help Applicants to better address patentability issues with their current patent applications for computer-implemented inventions.
Details of the updates to the EPO guidelines for examination can be found here: https://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/j.htm
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