Since 2015 we have seen a series of extensive updates to the computer-implemented invention (CII) sections of the European Patent Office’s Guidelines for Examination, the practice guide for EPO examiners to follow when examining cases. To produce these revisions, a systematic review of the relevant EPO Board of Appeal cases has been undertaken by a working group at the EPO over the last four years. During these years, this group has identified accepted themes in the case law, and has been working to update the Guidelines to reflect them.
The November 2018 edition has now been released, and it contains considerable changes. However, it should be remembered that the purpose of the Guidelines is not to announce substantive law changes. Although extensive, the changes are considered by the EPO to reflect already established European practice.
The new Guidelines reinforce and comprehensively represent EPO practice in the area of computing inventions. This area includes cases spanning a range of information and communication technologies, such as pure software, cloud computing, human computer interaction, and graphical user interfaces.
The culmination of four years’ work in this year’s Guidelines is an impressive achievement, with the benefit to users of the European patent system being greater consistency in examination.
However, some questions remain unanswered. The EPO’s stance on the inherent patentability or “technicality” of innovations in certain fields is still unknown. In other words, in some fields, accepted themes in the case law have not been identified, and therefore the Guidelines contain very little guidance, if any, on how to assess innovations in these fields.
Not having accepted or common themes in the case law can mean one of two things. It could be that there aren’t enough cases for a theme to be identified. Alternatively, the existing cases could be considered internally by the EPO to be in conflict with one another and resolving this would require a referral to the Enlarged Board of Appeal.
What happens next will depend on the technology. There isn’t enough EPO case law on aspects of AI and blockchain, for example, and for these it would seem reasonable to expect the EPO to wait for threads of case law to develop. Other technologies have been around for longer. These include computer simulation, data retrieval (search engines) and even how aspects of data content are examined. For these, clarification beyond that given in the updated Guidelines is needed, but themes in the case law are less apparent.
With the EPO’s comprehensive case law review now complete, we expect the Enlarged Board to be asked to clarify some points that the updated Guidelines leave unanswered.
Why is this important?
The EPO has historically considered its practice in the area of computer-implemented inventions to be settled. There has only ever been one referral to the Enlarged Board of Appeal on this subject (G 3/08), but the Board found no inconsistencies in the cases in question. Now that the EPO’s working group has completed its review, a series of referrals to the Enlarged Board to provide clarification on certain aspects of this area of European patent law is an exciting prospect.
For more information or advice, please contact Gareth Fennell or your usual Kilburn & Strode advisor.