The EPO approach to Computer Implemented Inventions (CII) Yannis Skulikaris Director Operations, Information and Communications Technology
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1 The EPO approach to Computer Implemented Inventions (CII) Yannis Skulikaris Director Operations, Information and Communications Technology March 2018
2 Background and context The EPO s approach to CII: fulfills the legal requirements of the EPC and is fit for purpose, i.e. supports industry and fosters economic growth is workable, examiners apply the EPO approach in a harmonized way in all technical areas in an efficient and targeted manner can be readily understood by users results in predictable outcomes for users 2
3 The EPO s legal framework Art. 52 EPC states that inventions shall be granted in "all fields of technology. However, some subject matter is not eligible for protection when claimed as such, for instance: discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentations of information; 3
4 Technical character The subject-matter for which protection is sought must have a "technical character" i.e. it must show a technically skilled person how to solve a technical problem using technical means. The problem solved by the invention must be technical, in contrast to for example a purely financial, commercial or mathematical one. Legal basis: The description must specify the technical field of the invention and disclose the invention so that the technical problem and its solution can be understood (Rule 42 EPC) Subject matter for which protection is sought must be defined in terms of technical features of the invention (Rule 43 EPC) Case law of EPO Boards of Appeal, e.g. T1173/97, T641/00, T258/03 4
5 Examples of technical and non-technical subject matter Technical control of an ABS system (vehicle Anti-blocking Brake System) implementation of a ground collision avoidance system in an aircraft balancing of computing load in a network of computers Non-technical a method of teaching a foreign language a pyramid sales promotion scheme, a method to optimize an investment portfolio a method to minimize tax due 5
6 The EPO Approach Claimed subject matter Hurdle 1 Does the subject matter contain features that have a technical character? NO Claimed subject matter is not an invention according to Art. 52(2)(3) YES Features considered to be technical are examined for novelty and inventive step YES Hurdle 2 Preparation for novelty and inventive step assessment. Analyse each feature of the claim and ask: is it technical? NO Non-technical features cannot be used to confer novelty or inventive step 6
7 Conclusions Inventions having a technical character that are or may be implemented by a computer program are not excluded from patentability Applicant cannot rely on non-technical features in the claim to support inventive step EPO CII practice is developed in interaction with stakeholders (epi, SACEPO) and described in the Guidelines, such that applicant can argue efficiently and examination result is predictable EPO approach is highly interactive, EPO examiner is receptive to applicant s argumentation, giving applicant the benefit of the doubt EPO Guidelines adapted to provide for technology developments and to reflect relevant case law better 7
8 Outlook Follow-up on trilateral CII comparative study (feedback from industry, clarity on Trilateral practices, informing stakeholders globally) 2nd EPO scoping workshop on Artificial Intelligence, 14 March 2018, as a follow up to the 1st EPO scoping workshop with industry on Artificial Intelligence and Cloud Computing (November 2017) EPO conference on Patenting of Artificial Intelligence, 30 May 2018 epo.org/ai2018 8
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