Friday - 05 October 2018

Has patenting AI and computer-implemented inventions just got easier in Europe?

The European Patent Office (EPO) has just published the new edition of their Guidelines for Examination that will come into effect from 1st November 2018. 

The Guidelines for Examination give instructions on the practice and procedure to be followed in the various aspects of the examination of European applications and patents in accordance with the European Patent Convention and its Implementing Regulations and is supposed to be followed by all European Examiners. Any changes to these Guidelines can therefore impact the action and conduct of Examiners in Europe. Managing Associate, Andrew White, outlines the key changes below. 

Guideline changes

Alongside re-written sections on unity and a move towards more definitive language e,g. “should” changing to “is”, “must” and “needs to”, the Guidelines provide clarity on ongoing the question: what is technical with regards to computer-implemented inventions?

Perhaps most relevant to those working with AI and computer-implemented inventions is the creation of entirely new sections directed at, for example:

  • cases where the invention is realised in a distributed computing environment;
  • mathematical methods;
  • artificial intelligence and machine learning;
  • claims directed to methods of simulation, design or modelling; and
  • programs for computers.

Mathematical Methods

In particular, the new section on mathematical methods provides a number of helpful examples of technical purposes which may be served by a mathematical method to help support the presence of an inventive step. These include:

  • separation of sources in speech signals; speech recognition, e.g. mapping a speech input to a text output;
  • encoding data for reliable and/or efficient transmission or storage (and corresponding decoding), e.g. error-correction coding of data for transmission over a noisy channel, compression of audio, image, video or sensor data;
  • encrypting/decrypting or signing electronic communications; generating keys in an RSA cryptographic system;
  • optimising load distribution in a computer network;
  • determining the energy expenditure of a subject by processing data obtained from physiological sensors; deriving the body temperature of a subject from data obtained from an ear temperature detector;
  • providing a genotype estimate based on an analysis of DNA samples, as well as providing a confidence interval for this estimate so as to quantify its reliability; and
  • providing a medical diagnosis by an automated system processing physiological measurements.

Similarities to the US

In some ways the inclusion of such examples in the EPO Guidelines is similar to the practice of the US Patent and Trademark Office (USPTO) issuing examples for evaluating claims for patent subject matter eligibility under 35 U.S.C. 101.  Many US patent practitioners working in this technical sphere already work to draft and prosecute their applications so that, at least in the minds of the Examiners, their patent applications will fall within one of these safe harbours. With the issuance of these new examples in the EPO Guidelines for examination, perhaps we will see the same being done by European patent attorneys. 

What this means for Innovators

Whether these changes to the EPO Guidelines will make patenting AI and computer-implemented inventions as such easier in Europe is difficult to say yet.  At the very least, the changes should make prosecution of patent applications in these areas more predictable. Therefore it’s best to seek advice from experienced European patent attorneys at an early stage, so they can help draft and prosecute patent applications in these technical areas in a manner that will navigate these safe harbours and improve the prospects of obtaining patent protection in Europe.

To discuss protecting the IP in your AI or other technical innovation, please contact our IT&E team today.

Andrew has experience of drafting and prosecuting British and European patent applications and managing international portfolios, particularly in the engineering and medical device fields. A European Patent Attorney and a chartered UK Patent Attorney, Andrew holds a Master’s degree in Physics and a PhD, both from the University of Bristol. 

About the author

Andrew White

Managing Associate

UK & European Patent Attorney

Andrew has experience of drafting and prosecuting British and European patent applications and managing international portfolios, particularly in the engineering and medical device fields. A European Patent Attorney and a chartered UK Patent Attorney, Andrew holds a Master’s degree in Physics and a PhD, both from the University of Bristol.