The 2019 update – summary of a few new updates to the EPO Guidelines for Examination.
EPO Guidelines 2019
The EPO Guidelines constitute the EPO's interpretation and understanding of the rules of the European Patent Convention ("EPC").
The 2019 update of the EPO Guidelines for Examination effective as from 1 November 2019 reflects some of the significant developments in EPO case law. A new section on product claims with process features has been introduced. Furthermore, the 2019 update addresses key topics, such as patentability of software and the patentability of plants or animals produced exclusively by essentially biological processes.
Confirmation of product claims with process features
The 2019 EPO Guidelines introduce a new section, confirming that a claim may contain both product and process features. Different from a product-by-process claim, a claim consisting of both product and process features merely defines a product instead of defining the product in terms of a process. The assessment of novelty is the same for product claims with process features as for product-by-process claims and, in the context of objections raised, the burden of proof lies with the applicant. The process features may establish novelty of the claimed product only if the process features cause the claimed product to differ from the products previously described in the prior art.
Plants/animals and their patentability
In recent years, it has been debated whether to accept the patentability of plants or animals exclusively produced by essentially biological processes. The 2019 Guidelines, however, maintain that plants and animals exclusively produced by essentially biological processes are excluded from patentability. In Broccoli/Tomato II (G 2/12), the Enlarged Board of Appeal ("EBA") previously interpreted the EPC to allow for the possibility of patentability of plants and animals exclusively produced by essentially biological processes. The conflicting interpretations regarding patentability of such have been questioned by the Board of Appeal in Pepper (T1063/18), which has been referred to the EBA by the President. All proceedings before the EPO potentially impacted by this have been stayed until the EBA renders its decision. The outcome will be one to follow.
AI and machine learning in the world of patents
The patentability of AI and machine learning has been a hot topic since a section regarding this subject-matter was added to the EPO Guidelines last year. The 2019 update clarifies that the terms "support vector machine", "reasoning engine" and "neutral network" do not, on their own, necessarily imply the use of technical means. Seen in isolation, these terms cannot be considered to constitute necessary technical character, but the context in which the terms are used should be considered when examining whether the claim has the necessary technical character in order to be patentable according to the EPC.
The 2019 update also includes a new view on computational efficiency of an algorithm in relation to assessing inventive step. Accordingly, the efficiency of an algorithm may be considered to contribute to the technical character of an invention if technical effect has already been established. This is considered as a step forward in recognising what this area may contribute with in relation to patentable inventions.
The updated EPO Guidelines for Examination will be valid as from 1 November 2019, and Bech-Bruun will continue to bring updates on any interesting topics and additions as this date approaches.