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Computer implemented inventions at the EPO: a guide for applicants and tips for attorneys

Whether your invention involves artificial intelligence (AI), computer programs, or other computer-related innovations, it can be easy to fall foul of the approach taken by the European Patent Office (EPO) to excluded subject matter. However, the EPO’s approach to handling these kinds of inventions can be confusing and is not altogether intuitive. We’ve prepared a guide for applicants that looks at some problems that might arise and offers tips for attorneys on how to put a patent application into good shape for the EPO.

Patent claim tips for computer implemented inventions

One tip that we touch on in our guide is the idea of being wary of excessive claim breadth. The law at the EPO is that a claim should only be broad enough that the technical effect is achieved across substantially all of the claim. If your claim covers a number of embodiments that arguablydo not achieve the technical effect then your claim may be considered to be too broad.

Computer-implemented inventions can fall foul of this in other ways. If your claim is too broad, then you might not be able to highlight technical characteristics that could otherwise help you with patentability. For instance “signal indicative of some information” is less technical than “MD5 hashed MPEG data signal”, though the latter is a subset of the former. A further difficulty is the view of some examiners that broader claims strip away so much detail that the remainder is little more than an “armchair invention” (a claim to something that doesn’t require particular technical detail or implementation) and therefore something that is unlikely to be inventive.

Another tip that we discuss in our guide is the value in providing sufficiently detailed examples. It is of course necessary under European law to describe one way of putting the invention into effect. However, increasingly, the EPO is taking a hard-line stance against computer-implemented inventions and particularly those relating to artificial intelligence. Tempting as it might be (to define a broader scope of claim) merely to describe that a problem is solved using “artificial intelligence” and to use phrases like “machine learning”, “generating a model” and “training” without more specifics, such an invention might be said to lack enablement. Authors of patent specifications should make sure to include details like: the kind of input data used to train the model and how much was used, the nature of the model (if it is a neural network, how many and what kind of layers are present), when training was considered to be complete and how it was tested, and any other parameters that might be necessary to implement a working system. Again, the EPO seems keen to make it difficult to pursue ‘armchair inventions’ where an applicant has said little more than the fact that a well-known problem can be solved using a well-known tool (AI) – possibly without the system ever having actually been built.

How to access this guide

As well as giving an overview of the actual law and giving summaries of case law as to what has and has not been allowed at the EPO in the past, our guide also looks at other tips relating to the claims and the descriptions for how to write a patent application to overcome the most common difficulties at the EPO for computer-implemented inventions. You can access it from our website at www.dyoung.com/cii-patent-tips.

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