- with readers working within the Chemicals industries
- A recent case from the EPO’s Boards of Appeal (T 0847/14) provides a useful reminder of the importance of preparing an appropriate claim set for computer modelling inventions.
- G 1/19 indicated that a computer-implemented method claim that merely produces data is unlikely to provide the technical character required to support an inventive step.
- Technical character most often follows from including a real-world application in the claim.
- The recent case also demonstrated why it is important that appropriate claims are present when the patent grants.
- A post-grant amendment was found to be an unallowable as it broadened the scope of protection, even though the amendment added a further step.
Background
Claim 1 of the patent related to a computer-implemented method for configuring a surgical guide and implant for maxillofacial osteosynthesis. A virtual model of a patient’s maxillofacial anatomy is generated and adapted to produce a further virtual model that simulates a cut producing bone portions separated into desired post-operative positions. A 3D structure of an implant is then determined that holds the bone portions in the positions. The virtual model includes attachment points defined on the implant and bone portions. Hence, a physical implant may be produced from the virtual model – but, crucially, claim 1 did not specify this step, nor did any of the dependent claims.
Novelty
The closest prior art, like the opposed patent, generated a virtual model of a patient’s post-surgical maxillofacial anatomy. The prior art differed in that a physical model was made based on the virtual model. Standard titanium plates with screw holes were bent around the physical model to determine attachment points to the bone portions.
The patentee argued that claim 1 should be interpreted such that all steps of the method were performed by or on a computer, thereby providing novelty over the prior art. The Board of Appeal agreed, following the principles set out in G 1/24. They found that claim 1 when read alone suggested all steps were computer-implemented. They also noted the primacy of the claims but said that consulting the description reinforced their interpretation of claim 1 in any event. This was because the embodiments also described each step as being computer implemented.
Claim 1 was found novel by virtue of a single step, namely the step of determining the structure of the implant when computer-implemented.
Inventive step (G 1/19 revisited)
By arguing that all steps of claim 1 must be computer-implemented, the patentee implied that the claim was limited to generating computer data. This brought the claim into the realm of G 1/19 and its teachings on how to determine the inventiveness of computer-modelling claims.
G 1/19 indicated that the mere generation of simulation data was unable to contribute to an inventive step as it lacked technical character (following from the COMVIK decision, T 641/00). All parties agreed that, in isolation, the step of determining the implant was non-technical as it was performed virtually. So, the question was whether this step contributed to a technical character of the claim as a whole.
The patentee’s problem was that the claim only defined producing the virtual model of the implant, and not a physical model. The patentee tried arguing that the claimed method resulted in the configuration of the final physical state of an existing real object used in a real technical setting, namely an implant customised to the patient. This was still a step removed from actually requiring a physical model to be made though.
The Board said that manufacturing an implant having the 3D structure determined in accordance with claim 1 would undisputedly allow the feature to have an impact on physical reality. This meant claim 1 included at least one implementation having technical character. Unfortunately for the patentee, the Board also noted that claim 1 included implementations that merely provided computer data defining the implant and so lacked technical character.
A claim must be inventive over its whole scope which, according to G 1/19, implies that the technical character of the method must also apply over the whole scope. So, the patentee’s arguments failed as claim 1 included implementations lacking technical character.
The Board also considered whether any technical character was implicit in claim 1 but found it was not. The Board explained that the claim may have been acceptable if the data defining the implant were specifically adapted for a technical use. For example, if the claim had required the data to be formatted so as to be directly readable by, or usable in, a specific manufacturing apparatus, such as a 3D printing device. Claim 1 lacked any such limitation.
Accordingly, the Board founds that the novel feature of determining the structure of the implant did not contribute to the technical character of the claimed method, certainly not over substantially the whole scope of claim 1. Hence, the novel feature could not support the presence of an inventive step.
The fall-back position also fails
he obvious fall-back position was to add a final step to claim 1 of producing the implant defined by the virtual model. The patentee did this in their first auxiliary request but had to use the description as basis because none of the granted claims contained this feature.
The description provided sound enough basis to meet the requirement of Article 123(2) EPC not to add subject matter over the disclosure of the application as filed. Claim 1 fell at the next hurdle though, namely Article 123(3)’s requirement not to amend a claim after grant in a way that extends the scope of protection of the claims.
In the present case, a superficial consideration would suggest there was no broadening of scope because the amendment added a further step to claim 1. Consequently, performing the method of amended claim 1 inevitably meant practicing the method of granted claim 1.
This is only part of the Article 123(3) test though as the provision of Article 64(2) EPC must be considered too:
“If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.”
The phrase “directly obtained by such process” has always been key to this provision. In the present case, the Board said that the protection conferred by a process claim does not, as a rule, extend to products obtained only by carrying out further steps not defined or implied by the claim. This was the case here.
Granted claim 1 produced data defining the implant, whereas claim 1 of the first auxiliary request produced the physical implant. The difference arose because the patentee had added a further step to claim 1. Therefore, the physical implant was not a product directly obtained from the method of granted claim 1.
This meant that the scope of protection now extended to the physical implant whereas previously it had not. Thus, the scope conferred by the claims had been extended. This was contrary to Article 123(3) EPC, meaning claim 1 of the first auxiliary request added subject matter.
The patentee correctly noted that a third party designing and producing an implant according to claim 1 of the first auxiliary request would have infringed claim 1 of the granted patent as well. Hence, the amendment did not put third parties in a worse position. However, the Board said this argument could not be allowed as it effectively ignored the legislator’s intent for including the word directly in Article 64(2) EPC.
It should be remembered that this issue arose because the additional step of producing the implant was not present in the claims of the patent. This highlights a pitfall in relying on the summary or detailed description sections to provide basis for amendments to introduce technical character.
Takeaway
- G 1/19 provided guidance on how the EPO was to examine claims directed to methods of computer modelling, and this guidance should be borne in mind.
- European patent applications directed to computer modelling inventions should include claims having the required technical character to provide inventive step.
- This may be a technical application of the method – preferably stated explicitly although implicitly may be enough.
- Defining the data produced in a way that is specifically adapted for a technical use may provide technical character.
- For method claims, consideration should be given as to what is the product directly obtainable from the process and claims included when a potential amendment sees this change.
- This is especially true where amendments add a further step performed at the end of the method.
- Even if the first patent application is not filed with the EPO, these issues should still be considered when drafting.
- It may be impossible to add suitable claims upon PCT regional phase entry with the EPO due to the strict rules not to add subject matter.
- Even for convention cases, the new claims may not be entitled to the priority date.
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.
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