The Guidelines for Examination at the EPO have been significantly revised with the updated version due to come into force on 1st November 2018. The revisions relate to Computer Implemented Inventions, Inventive Step assessment in Opposition, Unity and more.
While, as the name suggests, the Guidelines do not provide binding precedence for the EPO, they do set out the day-to-day practice to be adopted by examiners. Familiarity with the Guidelines is important for a European Patent Attorney: the Guidelines are the best tool we have for understanding how an examiner is likely to approach an issue and an argument solidly based on their content is unlikely to be dismissed.
In a series of articles, we examine the changes, and how these may impact practice.
Part G, II-3.5
The update of the EPO's Guidelines for Examination introduces dedicated sections covering the patentability of methods for performing mental acts, methods for playing games and methods for doing business.
Methods for Performing Mental Acts
The 2018 Guidelines explain that the exclusion from patentability of schemes, rules and methods for performing mental acts concerns instructions to the human mind on how to conduct cognitive, conceptual or intellectual processes, and explicitly state that the exclusion only applies when such schemes, rules or methods are claimed as such.
Importantly, the new Guidelines clarify that if a claim directed to a method does not exclude the possibility that all of the steps of the method could be carried out mentally, the exclusion will apply to that claim. Thus, even where the claimed method is based on technical considerations, if all of the steps of the method could be performed by the human mind, the claim will fall foul of the exclusion. Moreover, the Guidelines clarify that the fact that a method is complex is not sufficient to avoid the exclusion.
The new Guidelines also provide guidance as to claims that will not fall foul of the mental act exclusion.
For example, if a method provides a physical entity as the product of performing the method, then provided that a claim to the method includes a step of providing the physical entity, the claim is not regarded as a method for performing a mental act as such.
If a method requires technical means such as a computer to perform one or more of its steps, those technical means should be included in a claim to the method. The method is then not regarded as a method for performing a mental act as such, and the claim can be examined under the EPO's well established procedures for examining mixed-type inventions, in which features that do not contribute to the technical character of the claimed invention are disregarded in the assessment of inventive step. The Guidelines clarify that, in line with this approach, if a method includes steps that require the use of technical means and also steps that will be carried out mentally by the user of the method, those steps that are carried out mentally by the user can only contribute to the technical character of the method if they contribute to producing a technical effect serving a technical purpose.
Methods for Playing Games
Methods for playing games are excluded from patentability when claimed as such. This rules applies to traditional games such as card games or board games, and also to modern games such as video games and electronic gambling games.
The Guidelines outline the rationale for the exclusion of methods for playing games from patentability, on the basis that game rules are of an abstract purely mental nature which are meaningless outside of the game.
The new Guidelines recognise the growing sophistication of games such as video games, but clarify that even in sophisticated games in which gameplay develops based on the player's interaction with the game, such gameplay is still conceptual in nature and hence constitutes rules for playing games as such, and is therefore excluded from patentability.
However, if a claim is directed to technical means for implementing game rules (e.g. dice or a random number generator), then the claim has technical character and escapes the exclusion from patentability of methods for playing games as such. Examination of such claims proceeds in accordance with the EPO's well established procedures for examining mixed-type inventions, in which features that do not contribute to the technical character of the claimed invention are disregarded in the assessment of inventive step. The Guidelines note that the game rules themselves cannot contribute to inventive step, no matter how original they may be; inventive step can only be supported by technical effects that go beyond those that are inherent to the rules. In line with the EPO's standard practice, the Guidelines confirm that a technical effect can only be acknowledged if a technical solution is provided to a technical problem. Features that circumvent a technical problem, for example, cannot contribute to inventive step.
The Guidelines further state that features that produce psychological effects on a player such as feelings of suspense or amusement do not constitute technical effects and so are irrelevant in the assessment of inventive step. Cognitive content such as information about the state of a game that may be provided to a player is considered to be non-technical information that cannot support an inventive step.
The Guidelines do note, however, that features that specify how to provide a user input normally do make a technical contribution, though a mapping of parameters obtained from known input mechanisms to parameters of a computer game are regarded as game rules and so are excluded from patentability.
As the sophistication of modern forms of gaming such as computer games and electronic gambling continues to increase, the subject of patentability of methods for playing games will come under increasing scrutiny. The new Guidelines helpfully explain the EPO's approach to such subject matter, clarifying that while the methods of playing games exclusion can be avoided by the presence of technical means in a claim, only technical effects of such methods (rather than cognitive or psychological effects produced on the player of a game) can contribute to inventive step of such claims.
Schemes, rules and methods for doing business
The new Guidelines explain that subject matter or activities which are of a financial, commercial, administrative or organisational nature fall within the scope of the "business method" exclusion.
The Guidelines reiterate the longstanding principle that the business method exclusion can be avoided by the presence of technical means such as a computer in a claim. However, in such cases examination of inventive step will be based on the EPO's well-established approach to mixed-type inventions, in which only those features of the claim which contribute to the technical character of the invention are considered in the assessment of inventive step, and non-technical features are disregarded. Thus, modifications to a business method that seek to circumvent a particular technical problem cannot be regarded as inventive, whereas features which provide a technical solution to a technical problem can contribute to an inventive step.
The Guidelines further note that business method features may be found in many different contexts. In general terms, if a feature relates to an administrative rule that would be established by an administrator (e.g. prioritising patient data obtained from sensors over patient data provided by the patient themselves) then that feature belongs to the realm of business methods and cannot contribute to an inventive step.
Practice points
The new Guidelines do not change the EPO's approach to examining applications relating to these various categories.
However, there is useful clarification as to what will and will not be considered by the EPO to be a method for performing a mental act as such, and to the EPO's approach to subject matter which falls within the categories of schemes, rules and methods for performing mental acts, playing games or doing business.
The presence of technical means in a claim is sufficient to overcome the initial patentability hurdle, but in the subsequent assessment of inventive step the question of whether the claimed method provides a technical solution to a technical problem will still be decisive, bearing in mind that only technical effects of such methods (rather than cognitive or psychological effects produced on the player of a game, for example) can contribute to inventive step of such claims.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
