The European Patent Office (EPO) has recently decided against overturning a decision to refuse a patent application for a computer-implemented platform for cell analysis on the basis of a lack of sufficiency (T 0660/22).

The defining issue of this appeal relied on precedent set by the G 1/19 Enlarged Board of Appeal decision. In G 1/19, the Board determined that data about a calculated technical effect (such as correlation data) is ‘just data’ and insufficient to establish a technical effect. However, it held that indirect measurements, despite potentially involving significant computing efforts, are of a technical nature.

The T 0660/22 decision hinged on whether a method of calculating correlations between characteristic quantities and then constructing a graphical model could be considered an indirect measurement within the meaning of the G 1/19 decision.

Background

The patent application at issue, EP3239287A1, with joint applicants of the University of Tokyo and the Nikon Corporation, featured an analysis device configured to analyse images of cells to which a stimulus was applied.

The invention’s aim was to identify relationships between the cell’s elements. The microscope images are analysed, and the elements and their ‘characteristic quantities’ are extracted in a time series. A graphical model of the correlations between the characteristic quantities over time is then constructed to investigate mechanisms that control ‘vital phenomena’ in the cell.

The applicants appealed against a decision of the Examining Division to refuse their application on the basis of a lack of compliance with Article 83 EPC (the invention shall be disclosed in a sufficiently clear and complete manner for it to be carried out by a person skilled in the art).

Initial prosecution

The Examining Division felt that the technical purpose of the invention was lacking because the claims covered the computation of a ‘practically unlimited’ number of characteristic quantities and correlations.

As the application did not disclose any specific mechanism nor which ‘vital phenomena’ must be observed, the Examining Division argued that the skilled person would not be enabled to perform the invention over the entire scope of the claims without an undue burden (Article 83 EPC).

Furthermore, the Examining Division submitted that compliance with Article 84 EPC (claims shall be clear and concise and be supported by the description) was also lacking, as the absence of a clear technical effect meant that the claims lacked support.

In response, the applicants contended that their invention was simply a generic analysis tool, much like an oscilloscope. They maintained that the computations were merely a way of manipulating data and that the desired outcome was left up to the user.

The appeal

The Board of Appeal disagreed with the Examining Division that the application did not comply with Article 83 EPC. The Board suggested that the invention could in fact be implemented by the skilled person with little difficulty as it was sufficiently clear and completely disclosed.

However, the Board instead asserted that there was no technical problem solved by the invention, and as such, no inventive step could be acknowledged (Article 56 EPC).

The Board of Appeal followed the precedent set by the G 1/19 Enlarged Board of Appeal decision, stating that whilst the correlation data may be useful, it equally may not be, and therefore the calculations were insufficient to establish a technical effect.

In response, the applicants argued that their model was an ‘indirect measurement of physical reality’ in the sense of G 1/19 and that all technical tools could also be used for non-technical purposes, such as those who display Galileo thermometers merely for their aesthetic value.

In their final conclusions, the Board of Appeal submitted that methods comprising measurement of physical quantities followed by calculations to derive values could not be considered indirect measurements unless the calculations corresponded to a known, factual relationship between the quantities involved and were used to determine the physical quantity of interest.

Quoting the G 1/19 decision, the Board stated that calculated values without a factual relationship are ‘just data, which may be used, for example, to gain scientific knowledge’. The Board of Appeal concluded that whilst the correlation values may convey information reflecting physical reality, this was not sufficient to qualify as indirect measurements. The correlation values in this case were not measurements of specific and predefined physical phenomena and so the claimed device and method alone could not help a scientist to determine cell properties. As such, the application could not be considered to provide a technical contribution and does not involve an inventive step.

The Board of Appeal therefore dismissed the appeal.

Conclusions

This case draws attention to the importance of clearly highlighting an invention’s technical character in a patent application, particularly when drafting for computer- or AI- based tools for biological applications. Furthermore, care must be taken to not claim too broadly as this could lead to a refusal for lack of sufficiency.

If you would like to discuss whether your biological software might be protectable by patents or any other IP right, please get in touch and one of our expert attorneys will be able to assist.