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Thursday, 18 January 2018

Presentation of information: Is the EPO stretching the line for patentable subject-matter, again?

A cat looking for information
The new Guidelines for Examination of the EPO, valid from 1st of November 2017, include an interesting revised (and rather detailed) section G II 3.7, dedicated to the patentability of claims based on presentation of information. Presentation of information under 52(2)(d) of the EPC includes any form of information (such as visual or, audio) and covers both its cognitive aspect as well as the means of communication. However, the fact that the claims include purely cognitive (and thus non-technical) aspects does not automatically mean hat they are excluded from patentability. Presentation of information that assists the user in achieving a technical task has a technical effect (confirmed also in T336/14 and T1802/13). 

This, one could claim, is old news. Nonetheless, the Guidelines continue by stating that whether a specific invention falls under the scope of Art. 52(2)(d) might depend either on its content or on the way it is presented. When the information has as its sole objective to assist the recipient in making a purely non-technical decision, then the presentation of information is non-technical:

“Information representing a state of a non-technical application run on a computer system, such as the state of a casino game, a business process or an abstract simulation model, constitutes non-technical information. This type of information is exclusively aimed at the user for his subjective evaluation or non-technical decision-making which is not directly linked to a technical task".
This means that what is important is the role this information plays: will it be used for a technical purpose or not?

The Guidelines continue:
“A feature defining a presentation of information produces a technical effect if it credibly assists the user in performing a technical task by means of a continued and/or guided human- machine interaction process (T 336/14 and T 1802/13). Such a technical effect is considered credibly achieved if the assistance to the user in performing the technical task is objectively, reliably and causally linked to the feature.”

The Guidelines add yet another requirement, namely,  the manner of presenting information should produce in the mind of the user an effect that does not depend on the user’s psychological factors but on purely objective physical parameters. The choice of one or another way of presenting information, when this is based on the subjective preferences of the recipient (some prefer that information is presented in numerical way, others in text,  yet others that the information to be conveyed in writing in some audio-visual manner) may thus not be considered technical. On the other hand, when the choice of presentation mode depends on the recipients physiological attributes, the presentation of information has a technical character. 

One of the examples referred to in the Guidelines is  a  visual aid that permits a surgeon to position an implant in a more precise, timely and credible manner. Such a presentation of information would in fact provide technical effect.  Yet another interesting example provided by the Guidelines is that of a soccer game:

“In a video soccer game, the particular manner of conveying to the user the location of the nearest teammate by dynamically displaying a guide mark on the edge of the screen when the teammate is off-screen serves the technical purpose of facilitating a continued human-machine interaction by resolving conflicting technical requirements: displaying an enlarged portion of an image and maintaining an overview of a zone of interest which is larger than the display area”

So far so good! But where do we draw the line of patentability when it comes to inventions that cover methods related to the presentation of information? It seems that the above-stated example allows for a certain  range e of interpretation. When the presentation of information (both content andr method of presentation) allows the recipient to perform a technical act (in the previous examples, placing an implant or identifying a player) in a more timely, precise and credible manner, it will be considered to have a technical effect. 

OK, but how about, for instance, claims related to lean manufacturing? Lean manufacturing covers methods that involve the development of information and the appropriate communication of the information to users (employees involved in the production process)., It has as an objective to minimise waste and costs and to maximise efficient production, taking into consideration objective factors such as the number of employees, the space, the nature of the product, and the constraints of the manufacturing processes.. An application of the Guidelines would lead us to the conclusion that although lean is per se not technical, it might in fact provide a technical result, since it is presented proactively,  depends on the user’s physical parameters, and its goal is to enable the user to perform a task in a more efficient and precise manner. The result of the different steps of a lean production method are in fact technical (such as reduced time, decreased number of accidents, and  enhanced quality of products). Against this backdrop, it seems that the new G II 3.7EPO Guidelines open up  new opportunities with regards to the definition of patentable subject-matter.

A final thought: If applying the Guidelines leads to the conclusion that a method of lean manufacturing could be a patentable invention, how far away are we from discussing patentability of pure business methods in the EPO? 

11 comments:

The Convention watchdog said...

The post gives the impression that the revised Guidelines suggest a more liberal approach of assessing inventive step for inventions directed to inventions comprising non-technical features. However, this seems not to be the intention of the revision. Rather the Guidelines add examples from the case law in order to assist users how to find the rather difficult boarderline between patentable and non-patentable inventions in the field of computer implemented inventions. In particular, this applies to the soccer game example which is taken from T 0928/03 (Video game/KONAMI) of 2.6.2006, a decision which has been repeatedly referred to in the relevant parts of the Case Law book. Thus, apparently no stretching the line for patentable subject-matter but giving more guidance in a complex field.

Anonymous said...

The 'Guidelines' are guidelines. The law is as written in the EPC with reference to the case law of the Boards for assistance with interpretation. If the case law supports the guidelines, the guidelines are not stretching the law.

Anonymous said...

EPA for UK:

I must confess that I'm slightly confused as to how a claim to lean manufacturing would be considered as a presentation of information, unless the claims were very poorly drafted. The link to pure business methods isn't convincing at all, I'm afraid.

Anonymous said...

what is the definition of the word "technical" that is so heavily being leaned upon?

Anonymous said...

" An application of the Guidelines would lead us to the conclusion that although lean is per se not technical"

I do not follow as to why this statement has merit.

Given the predicate that lean is directly related to "technical" improvements (however that word may be defined), I would posit that the exact opposite statement would be true: lean IS per se technical.

Anonymous said...

What is a "pure business method?"

Anonymous said...

"...it seems that the new G II 3.7EPO Guidelines open up new opportunities with regards to the definition of patentable subject-matter". Nope. Just no. The Guidelines do not open up any opportunities.

As previous comments have set out above, the Guidelines are simply that, guidelines. The law is the law as set out in the EPC and the case law of the Boards of Appeal. The guidelines do nothing more than attempt to explain that law. If new opportunities are opening up it is because there is case law that has done so.

MaxDrei said...

Good comment, that last one. Does it help, I wonder, to keep in mind that i) the Guidelines are distilled out of DG3's leading cases, the Established Caselaw of DG3, no less, ii) the Guidelines are not written by judges, and iii) the Guidelines are for EPO Examiners. The Guidelines are intended as a help to DG1 in its task of examining consistently the applications filed at the EPO. For the Established Caselaw of the Boards of Appeal of the EPO, see the White Book.

Thus, in argument with DG1, quote the Guidelines. For DG1 it is holy writ. These days, no member of DG1 will have the nerve to push The Guidelines. But, in presenting cases to the EPO's Boards of Appeal, don't make the mistake of shaking a copy of The Guidelines at the Board. Instead, remind them what is their own Established Caselaw, direct from the White Book.

If you want to push the legal envelope, you are not going to do it with The Guidelines but only on appeal to DG3, by arguing convincingly that DG3's "established" caselaw is not so established as to be carved in stone.

Attentive observer said...

I fully support Max Drei's view.

By the way, decisions of the BA are only binding to the examining and opposition divisions if they are clearly named as such in the Guidelines.

Should you wish to quote in first instance a decision which is not in the Guidelines, you will have to convince it that it applies, by analogy, to your case. Otherwise it will be acknowledged but ignored.

Before a BA, bringing in case law from other BA is rarely successful. They are not interested, as case law, unless from the EBA is also not binding. How many BA even refused to refer a case to the EBA, although it could have been done in view of diverging decisions.

Ron said...

Indeed. I have read numerous decisions where the (usually British) attorney has, when arguing on the basis of EPO case law, been reminded that, unlike Anglo-Saxon legal systems, the instances of the EPO are not precedent-driven, but are only constrained by the legal code of the EPC and its rules. Not that this stops the EPO from treating case law as binding when it suits them: Heads we win, Tails you lose!

maxdrei said...

Oh come on, Ron. You cannot be serious. First, define what you mean by "the EPO". Is it DG1, for which The Guidelines are holy writ, binding? Or is it DG3, for which G Decisions are in practice "binding"? For every T Decision that helps you, the other side can find one that helps them. It never ceases to amaze me when judges in English patent cases cite a single T Decision as representing some sort of precedent binding at the EPO. Recall Robin Jacob, saying that the EPO's White Book of Established Caselaw is one of the most important reference books on his desk.

Flexibility cuts both ways. It helps the EPO get to a just result, but it helps you too, in putting forward your best case.

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