Inventions that fall into certain categories of excluded subject-matter, including programmes for computers, mathematical methods and mental acts, are not patentable in Europe. The EPO’s established ‘COMVIK’ approach assesses inventive step for claims that include a mixture of features that do and do not fall into categories of excluded subject-matter. If a claim feature relates to excluded subject-matter and does not contribute to a technical solution to a technical problem then it is ignored for the assessment of inventive step
Insights: excluded subject matter
Drug discovery is expensive. Computers are an important tool in combating this, because their computations can reduce the number of time-consuming physical tests needed. The use of computers in drug discovery is the subject of a great deal of research and we saw an example of this in the news last week when it was reported that a powerful new antibiotic had been discovered using artificial intelligence (see J. Stokes et al., “A Deep Learning Approach to Antibiotic Discovery”, Cell, vol. 180, no. 4, pp. 688-702.e13, 2020. Available: 10.1016/j.cell.2020.01.021, widely reported by the media).
Further discussion on the UK IPO Patent Hearing Officers approach to the question of excluded subject matter.This article looks at one of those decisions in more detail: Hitachi Ltd’s GB patent application relating to a computer-implemented construction site management method.
The UK IPO appears to have been prepared to take a more favourable approach towards computer software falling on the borderline of what is considered allowable. Such cases, having received an initial refusal from the UK IPO Examiner, have come before the Hearing Officer of the UK IPO for consideration.
The European Patent Office’s latest Guidelines for Examination entered into force on 1 November 2018. Applicants in the software fields sometimes find the EPO’s approach to examining computer implemented inventions (CIIs) confusing. The Guidelines for Examination can provide a helpful starting point for demystifying their methodology and determining how a given invention might be received by the EPO. Any changes to the Guidelines are therefore important to applicants in the software area.
The latest edition of the EPO’s Guidelines for Examination in Europe will enter into force on 1 November 2018. We look at some significant changes.
Decisions from the UK Intellectual Property Office (UK IPO), ‘Landmark Graphics Corporation’, suggest the UK IPO has been overly strict in applying the law relating to computer related inventions.