The EPO has recently published the 2018 revision to its Guidelines for Examination, which are generally updated annually to take into account developments in patent law and practice. For a complete list of sections that have been amended this year, please see the EPO’s website here. These new Guidelines will come into effect on 1 November 2018.
Notably, some of the key updates this year concern Part G, Chapter II, 3.3-3.7: these provisions outline the exceptions to patentability under Article 52 of the European Patent Convention (“EPC“), including mathematical methods, business methods and programs for computers. Claims directed to such subject matter would normally not be patentable, but the updated Guidelines elaborate on the types of claims which still might be eligible for patenting, and provide concrete examples of such eligible claims.
In the case of computer-implemented inventions, any invention that includes these non-patentable subject matter will be eligible for patenting only to the extent that it has a “technical character” embodied in the form of technical features as defined in its patent claims. The updated Guidelines now contain a separate section on Artificial Intelligence and machine learning (see revised section 3.3.1), which suggests that the application of AI and machine learning in various fields, such as, say, in a heart-monitoring apparatus for the purpose of identifying irregular heartbeats, would make a technical contribution.
Viewed in context, one must keep in mind that the EPO Guidelines are not formal legal provisions, but are intended to be a “basis for illustrating the law and practice” in proceedings before the EPO (see here). At an event this week organised by Queen Mary University of London on computer-implemented inventions before the EPO, the EPO Technical Board of Appeal 3.5.01 (being the EPO board dealing with appeals in the field of computer-implemented inventions) clarified that it is not bound by the Guidelines in its decision-making process but rather that the Guidelines are meant to reflect and imbibe the recent decisions made by the Board in interpreting the EPC and its associated Protocols.
Nevertheless, these developments have to be seen alongside the other efforts being taken by the EPO in ensuring that European patent law remains suitable and robust to tackle computer-implemented inventions. In May 2018, the EPO held (for the first time) a conference on patenting Artificial Intelligence and soon after, in June 2018, the heads of the five largest patent offices (USPTO, EPO, JPO, the Korean patent Office and the State Intellectual Property office in China) re-emphasised the impact of AI on the patent system as one of their “main strategic priorities“. In December 2018, the EPO will host a conference on the patenting of blockchain-based inventions.
These recent developments are indicative of the EPO’s proactive response towards the changing technological landscape, and a willingness to engage with and potentially grant patents for computer-implemented inventions such as AI- or blockchain-enabled technologies if they meet the applicable criteria.