EPO Amended Guidelines to Take Effect 1 March 2022
In an effort to meet the requirement of annual updates, the EPO has announced that new Guidelines for Examination (“Guidelines”) will go into effect as of 1 March 2022. Key changes to the Guidelines have been implemented in Section F-IV, 4.3 – Inconsistencies and Clarity and Section G-II, 3.3.2 – Simulation, design or modelling. Two sections where key changes to the Guidelines have been implemented are discussed herein.
Guidelines Section F-IV, 4.3 – Inconsistencies and Clarity.
The Guidelines at F-IV, 4.3 have been updated to reflect changes in view of the recent caselaw from the Boards of Appeal (EPO T 1989/18) related to amending the description to be in conformance with the allowed claims. In T 1989/18, the Boards of Appeal held that no legal provision of the EPC or the implementing rules supports the longstanding requirement that unclaimed embodiments be excised from the description or otherwise indicated as falling outside the scope of allowed claims that were amended during prosecution.
The new Guidelines reflect this holding by rewriting nearly all of Section F-IV, 4.3(iii), previously mandating deletion of matter outside the scope of the claims from the specification. Notably, however, while substantially rewritten, the updated Guidelines do not eliminate the need to bring the specification into conformance with the amended, allowed claims. Instead, according to the updated Guidelines, to meet the requirements of Art. 84 EPC for clarity, there must be no “inconsistencies” or “contradictions” between the claimed subject matter and the written description. The terms “inconsistent” and “contradictory” are outlined in the Guidelines as “ways to carry out the invention [that] are not encompassed by the wording of the claims.” The Guidelines use the example of a feature that is broader or has a different meaning than a claimed feature or a feature which is “demonstrably incompatible” with an independent claim to explain the presence of an inconsistency. The updated Guidelines require that such inconsistencies be corrected by deleting them from the specification or indicating them as falling outside the subject matter for which protection is sought.
Importantly, the Guidelines have been amended to note that inconsistencies do not include features not claimed as dependent claims, as long as such matter can be interpreted to be encompassed by an independent claim. Further, the Guidelines explain that no inconsistency is present where a described embodiment fails to mention one or more features of an independent claim so long as they are present by reference to another embodiment or implicit.
In any case, according to the updated Guidelines, benefit of doubt belongs to the Applicant for borderline cases of inconsistency or contradiction, and it seems this should aid in preventing refusal of the application where reasonable arguments exist as to subject matter remaining in the written description.
Revisions to the Guidelines Section F-IV, 4.3 also address the use of a generic statement in the disclosure to remove non-conforming embodiments from the scope (e.g., “subject matter not encompassed by the claims is intended to provide an example and does not form part of the invention”), noting that such a statement is ineffective. Ambiguous expressions have also been directly addressed, the Guidelines now noting that non-conforming embodiments must be unambiguously marked or deleted.
Our general impression of these modifications is that, despite the ruling in T 1989/18, the EPO has not substantially changed its position. Amendment of the specification will continue to be the norm in cases where the claims have been amended during prosecution. Indeed, it may be even more difficult and time consuming to determine what is and is not an inconsistency or contradiction worthy of amendment going forward, although Applicants can rely upon the benefit of doubt now afforded to them.
Guidelines Section G-II, 3.3.2 – Simulation, design or modelling
As we announced in a previous newsletter, on March 10, 2021, the enlarged board issued decision G 1/19 concluding that the long-established “COMVIK” approach for computer-implemented (CI) inventions (T 641/00) also applies to computer-implemented simulations. Accordingly, computer-implemented simulations are expected to be treated by the European Patent Office (EPO) as any computer-implemented invention and to be subject to the same two hurdles set by the COMVIK approach to assess compliance of such an invention, namely the eligibility requirement and the inventive step requirement.
This decision drew much attention as inventions in the field of machine learning (ML) and artificial intelligence (AI) are increasing and find applications in many areas, such as, for example, drugs, medical diagnosis, chemical processing, image and speech processing, transport, and communication networks.
The decision has now been translated into amendments in the Guidelines for Examination at the EPO. Particularly, section G-II, 3.3.2 has been largely amended to specify that “Computer-implemented methods of simulating, designing or modelling should be examined according to the same criteria as any other computer-implemented inventions (G-VII, 5.4, G 1/19).” Moreover, many minor amendments have been made in relation to computer-implemented inventions as evidenced by the list of changes (Index for Computer-Implemented Inventions) that is annexed to the revised Guidelines.
The Guidelines now indicate, inter alia, that for establishing the presence of a technical effect, it is not decisive whether the simulated system or process is technical or whether the simulation reflects technical principles underlying the simulated system and how accurately it does so. The Guidelines now recognize that computer-implemented simulations comprising features representing an interaction with an external physical reality at the level of their input or output may provide a technical effect related to this interaction. More importantly, the Guidelines also now recognize that purely numerical simulations, i.e., those without an input or output having a direct link with physical reality, may still solve a technical problem provided that the underlying models and algorithms contribute to the technical character of the invention by their adaptation to a specific technical implementation or by an intended technical use of the data resulting from the simulation. The Guidelines provide the example of control data for a technical device as one instance where the output data of a numerical simulation may provide an “implied” technical effect from a numerical simulation. However, the Guidelines go on to indicate that “if the claim also encompasses non-technical uses of the simulation results” then the potential technical effect does not span the entire scope of the claim, and therefore, cannot be relied on for determining inventive step.
Regarding accuracy of a simulation, the Guidelines have been amended to include an accuracy consideration for a simulation as influencing an established technical effect. Indeed, according to the new guidelines, it is possible that an alleged technical improvement may not be present if the simulation is not sufficiently accurate for its intended technical use. Formulation of the objective technical problem (Art. 56) and the assessment of sufficiency of disclosure (Art. 83) may both be impacted by accuracy of a claimed numerical simulation. However, a technical effect may still be achieved by a simulation having certain inaccurate parameters, but where the parameters remain sufficient for achieving the intended technical use.
With these amendments to the Guidelines, we expect to see holdings from decision G/19 rapidly applied in the Examination proceedings before the EPO.
 Enlarged Board of Appeal of European Patent Office Clarifies Examination of Patentability of Computer-implemented Simulations