IP Information & News

Preview of updated EPO Guidelines for Examination for computer-implemented inventions

Dr Andrew Alton

By Dr Andrew Alton

Partner

The EPO has just published a preview of the updated Guidelines for Examination due to come into effect on 1 November 2018.

Amongst other updates, the guidelines for computer-implemented inventions (CIIs) have been expanded upon. A useful index, highlighting the changes, is available here.

What to look out for

There are some more extensive examples of subject-matter meeting (or not) the further technical effect requirement and some discussion of the specific fields of information modelling, programming, programming languages and data retrieval, formats and structures.

There are more detailed discussions of the interaction between CIIs and other excluded fields including mathematical methods, mental acts, games, business methods and presentations of information.

Graphical user interfaces

The Guidelines for Examination of graphical user interfaces (GUIs) were amended back in November 2017 and have not been updated again. However, the discussion of data retrieval, formats and structures is now within the context of programs for computers, rather than presentations of information.

Battle lines drawn

The overall approach of splitting a claim into technical and non-technical features, and using only the novel technical features to assess the presence of an inventive step, has not changed. However, more concrete examples of subject-matter areas which are considered technical by the EPO are to be welcomed.

The battle lines have been firmly drawn on the issue of correctly splitting the claim features between technical and non-technical features when prosecuting CIIs in other fields. The separation is a strict one according to the Technical Boards of Appeal (see T 1722/12) and might be cited as a reminder to Examiners of how the test should be applied.

I'll be writing in more detail about the updated guidelines in the near future. In the meantime, for more information, please feel free to get in touch with me at aaa@udl.co.uk.

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