The bar for patenting software is generally higher than for traditional technology. This is mainly due to the fact that “programs for computers” and “mathematical methods” are not considered to be inventions under a legal provision in the European Patent Convention (EPC). This is the intention of the legislator and a political decision. Nevertheless, it is possible to patent software. This whitepaper provides an insight into how software respectively computer-implemented inventions (CII) are dealt with at the European Patent Office (EPO). The information is mainly based on the decision G1/19 of the EPO’s Enlarged Board of Appeal issued 2021. This decision is an all-out attack on CII and provides a good basis for an inside view into the software patenting at the EPO.
Since January 19, 2022, the Unified Patent System in Europa has been ramped up. On this day, EU Member Austria has ratified the Unified Patent Court Agreement (UPCA). Now enough EU Members are on board for the new system and the execution of the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has started. The implementation of the PPA will lead to the gradual launch of the system, for example, judges are elected and appointed. The new system will start on 1 June 2023.
本律所自 2023 年 1 月起新增两名合伙人：苗添豪先生和迈克尔·韦格勒（Michael Wegerer）先生
迈克尔·韦格勒（Michael Wegerer), 出生于1989年，2014年开始从事知识产权法领域工作。
The Enlarged Board of Appeal of the European Patent Office discussed older case law in its decision G 1/19 about computer implemented inventions, including decision T 1351/04. This decision is discussed with respect to “data intended for controlling a technical device”. According to G1/19 this data may be considered to have technical character because it has the potential to cause technical effects. In the following, we will take a closer look at this relevant decision T 1351/04.
The appeal in the case T 1351/04 is against the decision of the examining division to refuse the European patent application No. 02 258 100.3.
Subject matter of the application in suit
The claimed subject matter is in regard to create a specific index-file from a csv-file (e.g. an Excel-file). By employing the index-file, it is possible to significantly increase the speed of data extraction from a large-size csv-file. In the figure 1 below, you can see an example of the csv-file (on the right hand) and of the index-file (on the left hand).
For the claimed subject matter, the csv-file requires records containing fields forming different hierarchical levels, see figure 1 above on right hand side (top hierarchical level, lower hierarchical level). The index-file is in principle built as a tree structure. This means, in the index-file information of the csv-file are connected/arranged in a tree structure. This looks schematically as follows in figure 2:
Because the records in the index-file (based on the csv-file) are arranged in the tree structure, the respective record is called a “node”. When you look in figure 1 right hand, you can see that in the csv-file there are records like “COOLING AND HEATING” and “HOUSEWORK” as the top hierarchical level. Depending on these there are further records respectively. The hierarchical records in a row of the csv-file are key character strings. The hierarchical record of the csv-file is mapped in the tree structure of the index-file. At each node there is also so-called management information, which includes information about the starting position and the number of corresponding records in the csv-file to be searched. This information permits the desired records of the csv-file to be retrieved directly when the node having the desired key character string has been found (cf para.  of the description). When only keys of high-level nodes are used it is thus not necessary to follow the tree structure all the way down to the leaf nodes in order to retrieve the desired record information.
In other words, the hierarchical structure of the csv-file is transformed in the tree structure of the index-file, wherein addition information like starting position and number of corresponding records are stored. With this arrangement information of the csv-file can be retrieved by the index-file faster.
Is the subject matter of the application technical?
Yes, since the claimed method requires the use of a computer.
Features of the subject matter contributing to the technical solution of a technical problem
To assess the inventive step it must first be considered in how far the features of the claim contribute to the solution of a technical problem. The board took a look at the following feature since it is a distinguishing feature over the prior art:
“each node in the index includes the starting position information and number information used for retrieving records”.
As mentioned above, these features are part of the index-file and are called management information.
According to the description of the present application, the invention relates to a method for “promptly searching for and extracting data from a file” (cf paragraph ). The data searched for can be of any kind, eg of a commercial nature as in the described embodiment, and thus have no technical relevance in themselves.
The data are stored as records having certain “start positions“, ie memory addresses in the file to be searched. The computer reads these addresses in the form of the “management information” in the index-file and retrieves the associated data from the csv-file to be searched. The management information thus controls the computer by directing it to a certain memory location.
Functional data, intended for controlling a technical device, are normally regarded as having technical character. The management information contained in the present claims should be regarded as contributing to the technical character of the search method according to the Board of Appeal.
It follows that the mentioned feature that has a direct bearing on how the search is conducted should be considered for inventive step.
Is the data decisive?
Further, in the decision the BoA refers to the decision T 52/85. This seems to suggest that as long as a claimed method for searching a data file is concerned with the way a computer performs the search, it may be technical. If however the kind of data is decisive, the method’s contribution is nontechnical (cf T 52/85, point 5.2). As noted above, in the present case the kind of data searched for is of no importance.
In order to support possible argumentation of the technical character of claimed subject matter comprising “functional data” it would be beneficial, when the functional data is not only disclosed in a abstract manner but also in regard to the machine-level of the computer. E.g. as mentioned above it could be disclosed that the management information controls the computer by directing it to a certain memory location.
Claim 2 of the main request in the appeal:
A computer-executable file search method for searching a file to be searched (3),
said file to be searched (3) including records having fields allocated to each of a plurality of hierarchical levels and being constructed so that records having the same key character string in a field at the same hierarchical level are arranged in series and wherein for each record, the first field is the top hierarchical level, and subsequent fields form lower hierarchical levels,
the method comprising computer-executed steps of:
- creating (S3) an index file (5) using the method of claim 1;
- accepting (S5, S6; S10, S11)) an instruction to search for data relating to a specified key character string over said file to be searched (3), the instruction including selection of either a data extraction output or a drill-down business form output;
- retrieving (S7; S12, S13) from said index file (5) management information about one or more records related to the specified key character string on said file to be searched;
- extracting (S8; S14) data of the one or more records from said file to be searched (3); and
- outputting (S9) the extracted data;
wherein the retrieving and extracting steps comprise
when the data extraction output is selected, retrieving (S7) start position information and number information as management information about records related to the specified key character string and extracting (S8) data of a number of records specified by the number information from a position specified by the start position information;
and when the drill-down business form output is selected, retrieving (S12, S13), based on the pointer, a start position of a record of the node management information of the lower hierarchical level, and extracting (S14) data of the record based on the retrieved start position of the record.
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Currently, the new European Unified Patent System is being implemented, which is planned to start on April 1, 2023. The introduction of the Unified Patent System will have an impact on all European patents, including “old” European patents that have already been granted and are in force. Please find below more information on the new Unified Patent System.
After the start of the European Unified Patent System, an applicant of a European patent application can choose between the following options after grant:
- European Unitary Patent which will be uniformly in force in (currently) 17 EU states, including Germany, France, and Italy. In Fig. 1 below, these are the EU states marked in blue.
- Classic European Patent, which will be validated in one or more of the 39 member states (including Montenegro as of October 1, 2022) of the European Patent Organization, as before. In Fig. 1, these are all states marked in blue and green.
- Mixture of the European Unitary Patent, which will be in force in 17 EU states (see Fig. 1 in blue), and the Classic European Patent, which will be validated in one or more of the remaining 22 member states of the European Patent Organization (see Fig. 1 in green).
The new Unified Patent System provides for a Unified Patent Court. Patent infringement proceedings or nullity proceedings relating to a Unitary Patent can be conducted centrally via this court. The Unified Patent Court is responsible for European Unitary Patents and for classic European Patents and thus also for “old” European Patents which are still in force. However, in the case of a classical European Patent, during a transitional period of between 7 and 14 years after the start of the Unified Patent System, the national courts in the countries where the classic European Patent is validated will have jurisdiction in addition to the Unified Patent Court as before. In other words, for example, patent infringement proceedings in the case of a Unitary Patent will take place centrally before the Unified Patent Court, whereas in the case of a classic European Patent, a choice can be made between the Unified Patent Court and the national courts.
A patentee of a classic European Patent has the possibility – during the transitional period mentioned above – to exclude the jurisdiction of the Unified Patent Court. For this purpose, it is necessary to file a so-called “opt-out-request” for the classic European Patent. After the exclusion of the Unified Patent Court due to an opt-out-request, the national courts will continue to have exclusive jurisdiction for the classic European Patent.
Fig. 2 below shows the different possibilities.
An opt-out-request can already be filed 3 months before the start of the Unified Patent system in the so-called “sunrise period”. It is currently planned that the sunrise period starts on January 1, 2023. The question as whether an opt-out-request should be filed for a classic European Patent depends on the individual case. An opt-out-request is only possible as long as no action is pending before the Unified Patent Court.
Patentees and applicants of classic European Patents should take the following steps with regard to the new Unified Patent System:
- A patent proprietor of a classic European Patent should be aware in advance – i.e. preferably before the start of the sunrise period – whether an opt-out-request is necessary. If so, this should be filed during the sunrise period.
- If a classic European Patent has several patentees, they must jointly decide on a possible opt-out-request. They should therefore reach an agreement – preferably in writing – regarding a possible opt-out-request.
If you have any questions about the new Unified Patent System – for example, about the steps mentioned above – we will be pleased to answer them personally.
You can also find more information on the new Unified Patent System in our whitepaper or directly download the pdf.
Since January 19, 2022, the Unified Patent System in Europa has been ramped up. On this day EU Member Austria has ratified the Unified Patent Court Agreement (UPCA). Now enough EU Members are on board for the new system and the execution of the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has started. The implementation of the PPA will lead to the gradual launch of the system, for example, judges are elected and appointed. At the moment, Germany is acting as a “Gatekeeper”. As soon as the system is ready, Germany will file its ratification certificate and 3-4 months later (according to Art. 89(1) UPCA) the Unified Patent System will start.
The introduction of the Unified Patent System has an impact on all European patents, also on “old” European patents which are already granted and in force. Patentees and applicants of European patents and applications should be aware of the implications and respond as needed. This white paper is intended to provide a basic overview of the European Unified Patent System and to support the patentees and applicants in possible steps.
You can download a pdf-version of this whitepaper in English language.
Transitional provisions – applicability of Article 13(1) RPBA 2020 to cases where the summons to oral proceedings was notified before the entry into force of the RPBA 2020. (Catchword of the Board)
BoA, Decision of January 20, 2020 – T 1386/18; Article 13(1) RPBA 2020
The appellant filed requests with the BoA before the revised RPBA 2020 was into force
The appellant (applicant) lodged an appeal within the prescribed period and in the prescribed form against the decision of the examining division to refuse the European patent application No. 10840300.7.
- In 2018 the appellant filed his statement of grounds of appeal.
- In 2019 to prepare the oral proceedings, the BoA communicated its preliminary assessment.
- In 2019 the appellant filed a response.
- On January 20, 2020, the oral proceedings took place.
The revised RPBA 2020 is in force from January 1, 2020. Therefore, the written submissions of the appellant mentioned above have been filed before the RPBA 2020 came into force. The oral proceeding was held after the RPBA 2020 came into force.
The BoA notes in its decision the transitional provisions of the RPBA 2020
In its decision, the BoA noted that the RPBA 2020 applies, except for “new” Articles 12(4) to (6) and 13(2) RPBA 2020. Instead of which the “old” Articles 12(4) and 13 RPBA 2007 remain applicable.
This is laid down in the transitional provisions according to Article 25 RPBA 2020. “New” Articles 12(4) to (6) RPBA 2020 refer to the first stage (filing stage) of the appeal, see Fig. 1 below.
“New” Article 12(4) RPBA 2020 defines that a request, fact, objection, argument, and/ or evidence on which the decision under appeal was/were not based is considered as an amendment. Any such amendment may be admitted only at the discretion of the Board. Nevertheless, if the party demonstrates that the request, fact, objection, argument, and evidence was/ were admissibly raised and maintained in the proceedings leading to the decision under appeal, then it is not considered as an amendment. Compared to this, the “old” Article 12(4) RPBA 2007 –here applicable – has less stringent limitations on amendments at the first stage.
“New” Article 13(2) RPBA 2020 refers to the third stage of the appeal, see Fig. 1 above. This Article imposes the most stringent limitations on appeal submissions which are made at an advanced stage of the proceedings. Advanced stage means after the expiry of a period set by the board of appeal in communication under Rule 100(2) EPC or, where no such communication is issued, after notification of a summons to oral proceedings. In contrast, the “old” Article 13 RPBA 2007 – here applicable – has less stringent limitations.
BoA considers “new” Article 13(1) RPBA 2020 applicable
In the present decision, the BoA clarified, that the “new” Article 13(1) RPBA 2020 applies to the present proceedings because this Article is not excluded by the transitional provisions defined in Article 25 RPBA 2020. “New” Article 13(1) RPBA 2020 refers to the second stage of the appeal – see Fig. 1 above – and to amendments before notification of a summons or before the expiry of a time-limit of a communication. “New” Article 13(1) RPBA 2020 defines the conditions under which a party may amend its appeal case after the initial stage of the proceedings and before the period set in a communication under Rule 100(2) EPC has expired or before a summons to oral proceedings has been notified. The party must provide reasons as to why the amendment is submitted at this stage of the appeal proceedings. Its admittance is subject to the Board’s discretion alone.
Other Boards of Appeal have different views regarding the application/ interpretation of “new” Article 13(1) RPBA 2020
According to a further recent decision T 0032/16 of a different BoA, when compared, the revised wording in “new” Article 13(1) RPBA 2020 is more detailed in listing out the requirements on the party making an amendment to its appeal case and the criteria to be used by the Board when exercising its discretion. The difference however merely reflects much of the case law developed under “old” Article 13(1) RPBA 2007. Therefore, according to T 0032/16 no contradiction can be found in the wording of “new” Article 13(1) RPBA 2020 compared to “old” Article 13 RPBA 2007.
In a further recent BoA decision, T 0989/15 the Board saw no reason to apply the criteria of “new” Article 13(1) RPBA 2020 in addition.
- If the first stage took place before RPBA 2020 came into force then the “old” Article 12(4) RPBA 2007 for the first stage applies instead of “new” Articles 12(4) to (6) RPBA 2020. Therefore, for such cases, there are less stringent limitations on amendments at the first stage of the appeal proceeding.
- Where the summons to oral proceedings or a communication of the Board under Rule 100(2) EPC has been notified before the date of the entry into force (1 January 2020) “old” Article 13 RPBA 2007 instead of “new” Article 13(2) RPBA 2020 for the third stage applies. Hence, for such cases, there are less stringent limitations on amendments at the third stage of the appeal proceeding.
- Further, the “new” Article 13(1) RPBA 2020 for the second stage applies according to T 1386/18, irrespective of the fact that the summons to oral proceedings was notified before 1 January 2020. But according to T 0032/16 this “new” Article 13(1) RPBA 2020 is not stricter compared to the “old” Article 13(1) RPBA 2007 in combination with the developed case law which is good News.
Reasons for the decision
- Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) – Transitional provisions
The present proceedings are governed by the revised version of the Rules of Procedure which came into force on 1 January 2020 (Articles 24 and 25(1) RPBA 2020), except for Articles 12(4) to (6) and 13(2) RPBA 2020 instead of which Articles 12(4) and 13 RPBA 2007 remain applicable (Article 25(2) and (3) RPBA 2020). The general applicability of the RPBA 2020 to the present proceedings includes Article 13(1) RPBA 2020, irrespective of the fact that the summons to oral proceedings was notified before 1 January 2020 (cf. T 2227/15, T 32/16 and T 634/16, none of them published in the OJ EPO)
Winter, Brandl – Partnerschaft mbB, Patent Attorney Michael Schüller
1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC. 2. The application can be refused on that legal basis, irrespective of whether it
a) was filed on the same date as, or
b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or
c) claims the same priority (Article 88 EPC) as
the European patent application leading to the European patent already granted. (Headnotes of the Enlarged Board of Appeal (EBoA)) EBoA of the EPO, Decision of 22. June 2021 – G4/19 – Double Patenting
The appellant claimed priority of a granted EP Patent having the same subject matter
The appellant is the applicant of the European patent application-in-suit. The Examining Division of the European Patent Office (EPO) refused the application-in-suit. The refusal was based on the principle of the prohibition on double patenting. The application-in-suit claimed priority of a granted European patent, see figure below. The subject matter of the application-in-suit and the granted European patent comprised the same subject matter and are owned by the same applicant. Against the refusal of the Examining Division, the applicant of the application-in-suit filed an appeal.
The Board of Appeal (BoA) referred questions to the Enlarged Board of Appeal (EBoA)
In the appeal proceedings the BoA referred the following questions to the EBoA: “1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC? 2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed
- a) on the same date as, or
- b) as a European divisional application (Article 76(1) EPC) in respect of, or
- c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?
2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?”
EBoA gives an interpretation of the referred questions
- The essence of question 1 is according to EBoA, whether there is any legal basis under the EPC for refusing an application on the ground of “double patenting”. The term “double patenting” is interpreted in the narrow sense, where two or more EP applications are involved (and not a national patent).
- The definition of the “same subject-matter” or “the same applicant” is not the subject of the present referral.
- Further, the referred question 1 is restricted to substantive examination proceedings before the Examining division. Therefore, the referral does not extend to the question of whether and how the prohibition might be applicable in opposition proceedings.
- It is the EBoA’s understanding that in current Office practice an objection of double patenting is only raised if there are overlapping and still valid designations in both the granted patent and the application concerned.
- The essence of question 2.1 is as follows: if there is a legal basis in the EPC for the prohibition on double patenting, are all three of the possible constellations in which double patenting may arise to be treated in the same manner? Common to these constellations is that the granted patent and the application both have the same effective date.
Decision of the EBoA in regard to Question 1
For its decision, the EBoA concludes that Art. 125 EPC (https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar125.html) serves as a legal basis for the decision. Art. 125 EPC defines in the case of the absence of procedural provisions in the EPC, that the EPO shall take into account the principles of procedural law generally recognized in the Contracting States. To find out whether there is such a principle, the EBoA inter alia considers the preparatory documents of the Convention (= “travaux préparatoires”). Especially based on these documents the EBoA inferred that the prohibition on double patenting is such a principle generally recognized in the Contracting States according to Art. 125 EPC. As a consequence, the EPO is empowered and duty-bound based on Art. 125 EPC to apply the principle of the prohibition of double patenting. Therefore, the EBoA answered Question 1 in the affirmative. As a result, a European patent application can be refused if it claims the same subject-matter as a European patent that has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.
Decision of the EBoA in regard to Question 2.1 and 2.2
Questions 2.1 and 2.2 refer to certain conditions for a refusal based on double patenting. The EBoA derived the answer on Questions 2.1 and 2.2 mainly from the preparatory documents of the Convention again. The answer is pointed out in Headnote 2 above.
Overview of the different constellations in regard to the prohibition of double patenting based on the present decision of the EBoA
Below the different constellations according to the headnotes of the present decision are shown. Common to these constellations is that the granted EP patent and the EP application both have the same effective date.
- The EP patent application was filed on the same filing date as the EP patent application leading to the EP patent already granted (headnote 2a):
- The EP application is an earlier application in respect of the EP application leading to the European patent already granted (headnote 2b):
- The EP application is a divisional application (Article 76(1) EPC) in respect of the EP patent application leading to the EP patent already granted (headnote 2b):
- The EP application claims the same priority (Article 88 EPC) as the EP application leading to the EP patent already granted (headnote 2c):
- The EP application claims the same subject-matter as a EP patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC (headnote 1):
Consequences for practice
An applicant can have the legitimate interest to have a second EP patent application granted for the same subject matter. E. g. an interest can be the longer term of protection available to an applicant as a result of claiming an internal priority. Nevertheless, according to the present decision of the EBoA a European patent application can be refused based on the prohibition of double patenting irrespective of whether there is a legitimate interest of the applicant. To overcome the prohibition of double patenting, the applicant could amend one or more of the applications in such a manner that the subject-matters of the claims of the applications are not identical. For example, the applicant could adapt the applications such that the subject matters are partially overlapping. In such a case no objection regarding double patenting should be raised (see also the decision of the BoA T 877/06). A further strategy could be that the applicant in a first step tries to get an EP patent application with a narrower subject matter/scope of protection granted. Then, in a second step, the applicant could try to get an EP patent application with a broader subject matter/scope of protection granted. Thus, the applicant would already have a narrower EP patent and can then possibly try to obtain another EP patent with a broader scope of protection more freely and flexibly. This approach is especially beneficial for important inventions. To overcome the prohibition of double patenting in general the applicant could follow the proposals in the Guidelines for Examination G-IV-5.4 https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_iv_5_4.htm): withdraw overlapping designations, or choose which one of those applications is to proceed to grant.
Enlarged Board of Appeal Decision G4/19: http://documents.epo.org/projects/babylon/eponet.nsf/0/9D699BFBD3CC2C11C12586FC00338610/$FILE/G_4_19_decision_of_the_Enlarged_Board_of_Appeal_of_22_June_2021_en.pdf
WINTER BRANDL Partnerschaft mbB, Munich, German and European Patent Attorney Michael Schüller
On November 26, 2020, the German Bundestag (German Federal Parliament) in Berlin has approved the UPC Agreement. This is an important step towards the implementation of the Unitary Patent Package. The Unified Patent System is expected to be launched in spring 2022. Nevertheless, some steps still have to be taken.
The previous approval in the German Bundestag was unconstitutional
On March 10, 2017, the German Bundestag already approved the UPC Agreement. However, on March 31, 2017, a constitutional complaint was filed with the German Constitutional Court. Therefore, the ratification process of the Unified Patent System was stopped by Germany. On February 13, 2020, the Constitutional Court decided inter alia that in the vote in the German Bundestag the 2/3 majority was missing. After this decision of the Constitutional Court, the German Bundestag approved a new, unchanged bill on the UPC Agreement with a sufficient majority on November 26, 2020.
Besides the UPC Agreement, the German Bundestag adopts a protocol on provisional applicability
In addition to the UPC Agreement, the German Bundestag also approved a protocol on provisional applicability on November 26, 2020. With this protocol, it is possible that the Preparatory Committee of the Unified Patent System can appoint judges for the UPC, rent office space, etc. before the certificate of ratification is deposited by Germany.
In the next step, the German Bundesrat (Federal Council) has to approve the UPC Agreement
In Germany besides the Bundestag also the Bundesrat has to approve the UPC Agreement. The vote on this will take place on December 18, 2020. The approval of the UPC agreement in the Bundesrat is very likely since the same parties have a majority in the Bundesrat as in the Bundestag. Afterward a countersignature by the Federal Government and the German President takes place. In the end the approval is published in the German Federal Law Gazette. Then, the certificate of ratification is ready to be deposited by Germany.
The Central Divisions of the UPC will be located in Munich and Paris
Since the UK is going to leave the European Union on January 1, 2021, the UK is not part of the Unified Patent System and London will no longer be a location for the UPC Central Divisions. Therefore, the Central Divisions of the UPC will be located in Munich and Paris.
Summary of the important next steps
- On December 18, 2020, the German Bundesrat will probably approve the UPC Agreement.
- Then, the protocol on provisional applicability will be deposited by Germany (probably spring 2021).
- After that, the Preparatory Committee of the Unified Patent System will appoint judges, rent office space, buy furniture, etc.
- Germany will deposit the certificate of ratification after the preparation of the Preparatory Committee (probably end of 2021).
- Expected start of the Unified Patent System is in spring 2022.
Information of the German Bundestag:
Information of the European Patent Office:
WINTER BRANDL Partnerschaft mbB, Patent Attorney Michael Schüller, Munich
- The present invention, which is based on machine learning in particular in connection with an artificial neural network, is not sufficiently disclosed, since the training of the artificial neural network in accordance with the invention cannot be carried out for lack of disclosure
- Since, in the present case, the claimed method differs from the prior art only by an artificial neural network, the training of which is not disclosed in detail, the use of the artificial neural network does not lead to a specific technical effect which could give rise to inventive step. (Guidelines of the BoA)
BoA, Decision from May 12, 2020 – T 0161/18 – Method for determining cardiac output; EPC Art. 83, 56
The subject matter of the patent application in suit is the use of an artificial neural network to transform a blood pressure curve
The appellant is an applicant for a European patent application (No. 06804383.5). The invention concerns, inter alia, a method for determining cardiac output. For this purpose, the blood pressure of a person is first recorded as a blood pressure curve. The person’s blood pressure is taken from an upper arm of the person via a cuff 2, see below copied Fig. 1. Via a line 3, the blood pressure is led from the cuff 2 to a device 1 with a computing unit.
The copied Fig. 2 above shows the process sequence on the computing unit. It shows the blood pressure curve 7 which was recorded via the cuff 2. With the aid of an artificial neural network 8, the blood pressure curve 7 is transformed into an equivalent aortic pressure 9. From this, the cardiac output 11 is then calculated with the aid of an optimization model 10. The neural network 8 has weight values. These are determined by learning.
The Examining Division rejected the present patent application, since the above explained method is not inventive. The appellant objects to this in her appeal.
The BoA considers the invention not sufficiently disclosed
The BoA takes a position with regard to the claimed training of the neural network 8, see Fig. 2. According to the BoA, the patent application merely discloses that the input data for the training should cover a wide range of patients of different age, sex, etc. However, according to the BoA, the patent application does not disclose which input data are suitable for training the neural network 8. Neither does the patent application disclose at least one suitable set of training data. Thus, the training of the neural network 8 cannot be post-processed by the skilled person. The invention is thus not sufficiently disclosed.
The appeal is rejected by the BoA on the grounds of insufficient disclosure, among others.
Training data should at least under certain circumstances be disclosed in the patent application
In the present patent application, the process and device claim claimed that the weight values of the neural network are determined by learning. In order to avoid the ground for refusal on insufficiency of disclosure in this case, the input data for the training and at least one training data set should be disclosed in the patent description.
WINTER BRANDL Partnerschaft mbB, Patent Attorney Michael Schüller