G4/19 Decision: Double patenting is a ground for refusal before the EPO
The Enlarged Board of Appeal of the European Patent Office has made a decision on the G4/19 referral.
The Guidelines for Examination give an indication of the practice and procedure which will be followed during Examination of a European patent application at the European Patent Office (EPO).
The Guidelines are updated annually, with the latest update taking effect from 1 November 2018.
This latest update is particularly interesting as it includes a specific section detailing how the EPO will examine the patentability of inventions relating to AI and machine learning, a rapidly developing area.
Art 52(1) of the EPC details that a European patent shall be granted for any inventions, provided that they are new, involve inventive step and are susceptible of industrial application. However, Art 52(2) of the EPC outlines a list of subject matter that will not be regarded as inventions, and thus excluded from patentability. One of the exclusions is to mathematical methods.
Inventions relating to mathematical methods are excluded from patentability if what is being claimed is directed to a purely abstract mathematical method and does not require any technical means. However, claims to methods or apparatus which involve the use of a mathematical method may be allowed if what is being claimed as whole has technical character and provides a technical solution to a technical problem. Determining whether the problem solved by an invention is considered to be technical in nature often results in uncertainty for applicants.
The newly introduced section in the Guidelines (G-II, 3.3.1) states that AI and machine learning are “per se of an abstract mathematical nature”. Consequently, the above guidance on the exclusion of mathematical methods also applies here and it is likely that claims directed to AI will be rejected as unpatentable unless it can be shown that they have the required technical character.
The EPO has made a particular effort to highlight that expressions such as “support vector machine”, “reasoning engine” or “neural network” will be examined carefully to determine whether the claimed subject matter has technical character. This is because the EPO has recognised that these terms are often used in the context of subject matter devoid of technical character and therefore excluded from patentability.
Helpfully, the new section provides examples of AI applications which the EPO would consider to have technical character. Such examples include: “the use of a neural network in heart monitoring apparatus for the purpose of identifying irregular heartbeats”, and “the use of AI in the classification of digital images, videos, audio or speech signals based on low level features (e.g. edges or pixel attributes or images)”.
However, the guidelines indicate that: “classifying text documents solely in respect of their textual content”, “classifying abstract data records” or even “telecommunication network data records” without any indication of a technical use being made are examples which will not be regarded as having technical character. These EPO considers these AI applications to be per se not directed to a technical purpose. The classification of text documents solely in respect of their textual content is said to be for a linguistic purpose, while the use of a classification algorithm, even with valuable mathematical properties, for the classification of abstract data is still not said to be a technical purpose.
The updated guidance helps clarify how the EPO will apply the existing exclusions to AI inventions. As expected, the guidance confirms that AI inventions will be treated as mathematical methods. However, the specific examples provided may give applicants a better idea of how the EPO will assess whether an AI invention possesses technical character. Thoughtful consideration of the new guidelines may prove useful in helping to highlight the patentability and technical character of your AI invention at the EPO.
If you are interested in patenting inventions on the fringe of patentability, please get in touch to speak to one of our attorneys.