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The recent EPO Board of Appeal decision T 0698/19, while more concerned with the field of business-driven innovation (in this case an automated method of making insurance payments, including integrating different risk models), provides a handy summary of how the EPO looks at matters that are a mix of technical and non-technical features. This is typically the case for AI, so the case is worth a look. If you are interested in how the EPO deals with business method inventions these days, the case as a whole is worth a detailed read.
The Board’s starting point is that an algorithm contributes to the technical character of a computer-implemented method only in so far as it serves a technical purpose. An algorithm is defined as a process or set of rules to be followed in calculations or other problem-solving operations, especially by a computer. An algorithm may be considered to provide a technical contribution, if it is particularly suitable for being performed on a computer in that its design was motivated by technical considerations of the internal functioning of the computer. Such technical considerations have to go beyond merely finding a computer algorithm to carry out some procedure.
It was not contested that the claimed method might provide better results than known methods, but this is an inherent property of deterministic algorithms. The mere fact that an algorithm leads to better results does not imply that it makes a technical contribution. Something more is needed (Reasons 3.6.5), specifically:
(i) the implementation of the algorithm must have a technical effect or specific technical considerations;
(ii) such technical effect should be derivable from the application as a whole; and
(iii) the algorithm must serve a technical purpose.
On the first point, the Board found that formulating an algorithm is a cognitive exercise The definition of an algorithm does not necessarily involve technical considerations, but an algorithm may be particularly suitable to be run on a computer in that its design was motivated by technical considerations relating to the internal functioning of the computer. An algorithm may contribute to the technical character of a computer-implemented invention in that it is adapted to the internal functioning of the computer or computer system/network, even if it does not serve another technical purpose. (The insurance context of the claimed invention did not provide such another technical purpose.)
On the second point, the claim must be construed to determine the technical features of the invention, i.e., the features which contribute to the technical character of the invention. A disclosure as to how the algorithm is implemented in practice must be provided in order to give evidence that the algorithm has any proved further technical effect with respect to known algorithms and that it provides an improvement over the prior art. Any further technical considerations or effect must be derivable from the application as a whole and the claims must comprise the specific features which contribute to the further technical effect of the invention. It must be made clear to third parties what the technical part of the invention is, and the technically skilled person needs these details to carry out the invention. (This was not met for the application in question.)
On the third point, the Board found that any effect of the claimed matter depends on the specific inputs of the insurance company according to the underlying business model, i.e., insurance conditions and insurance policy. A principal purpose is the automatisation of payment transfers. For these reasons, the purpose of the claimed method is considered non-technical. The details of the algorithm were driven by considerations of the business / insurance context, rather than technical considerations, such as considerations of the internal functioning of computers.
In the end, the board considered that no technical effect beyond merely finding and implementing an algorithm to run the algorithm on a computer could be derived from the application as a whole. Therefore, the distinguishing features over the closest prior art were considered to be non-technical and were not considered for the assessment of inventive step. As a result, the decision to refuse the application for lack of inventive step was upheld.
While the details of this case are unlikely to be relevant to those of us drafting AI applications, and the approach applied by the Board is in line with current practice and established case law, there is a key take-away from this case: “any further technical considerations or effect must be derivable from the application as a whole and the claims must comprise the specific features which contribute to the further technical effect of the invention”. And for those interested in software inventions in commercial / business contexts, the case also has a useful discussion of how the patentability can be done in terms of a team of a “notional” businessperson (as opposed to a possible real person) and the technical skilled person (see Reasons 3.6.4).