专利客体02 | EPO专利审查指南
Daily IP English 208:
你好，我是大岭（微信ID: dalingIPR），今天我们继续学习EPO专利审查指南关于专利客体的规定。
EPC专利客体排除的内容，和中国专利法不尽一致，有人认为EPC的排除分类更加细致合理。今天的内容主要涉及发现、科学理论和数学方法，特别是关于人工指南和机器学习的相关内容。
https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii.htm
目录：
Chapter II – Inventions
1. General remarks
2. Examination practice
3. List of exclusions
3.1 Discoveries
3.2 Scientific theories
3.3 Mathematical methods
3.3.1 Artificial intelligence and machine learning
3.3.2 Simulation, design or modelling
3.4 Aesthetic creations
正文：
3. List of exclusions
The items on the list in Art. 52(2) will now be dealt with in turn, and further examples will be given in order better to clarify the distinction between what is patentable in the sense of not being excluded from patentability under Art. 52(2) and (3) and what is not.
3.1 Discoveries
If a new property of a known material or article is found out, that is mere discovery and unpatentable because discovery as such has no technical effect and is therefore not an invention within the meaning of Art. 52(1). If, however, that property is put to practical use, then this constitutes an invention which may be patentable. For example, the discovery that a particular known material is able to withstand mechanical shock would not be patentable, but a railway sleeper made from that material could well be patentable. To find a previously unrecognised substance occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature can be shown to produce a technical effect, it may be patentable. An example of such a case is that of a substance occurring in nature which is found to have an antibiotic effect. In addition, if a microorganism is discovered to exist in nature and to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy.
For further specific issues concerning biotechnological inventions see G-II, 5, 5.3 to 5.5, and G-III, 4.
3.2 Scientific theories
These are a more generalised form of discoveries, and the same principle as set out in G-II, 3.1 applies. For example, the physical theory of semiconductivity would not be patentable. However, new semiconductor devices and processes for manufacturing these may be patentable.
3.3 Mathematical methods
Mathematical methods play an important role in the solution of technical problems in all fields of technology. However, they are excluded from patentability under Art. 52(2)(a) when claimed as such (Art. 52(3)).
The exclusion applies if a claim is directed to a purely abstract mathematical method and the claim does not require any technical means. For instance, a method for performing a Fast Fourier Transform on abstract data which does not specify the use of any technical means is a mathematical method as such. A purely abstract mathematical object or concept, e.g. a particular type of geometric object or of graph with nodes and edges, is not a method but is nevertheless not an invention in the sense of Art. 52(1) because it lacks a technical character.
If a claim is directed either to a method involving the use of technical means (e.g. a computer) or to a device, its subject-matter has a technical character as a whole and is thus not excluded from patentability under Art. 52(2) and (3).
Merely specifying the technical nature of the data or parameters of the mathematical method may not be sufficient to define an invention in the sense of Art. 52(1), as the resulting method may still fall under the excluded
category of methods for performing mental acts as such (Art. 52(2)(c) and (3), see G-II, 3.5.1).
Once it is established that the claimed subject-matter as a whole is not excluded from patentability under Art. 52(2) and (3) and is thus an invention in the sense of Art. 52(1), it is examined in respect of the other requirements of patentability, in particular novelty and inventive step (G-I, 1).
For the assessment of inventive step, all features which contribute to the technical character of the invention must be taken into account (G-VII, 5.4). When the claimed invention is based on a mathematical method, it is assessed whether the mathematical method contributes to the technical character of the invention.
A mathematical method may contribute to the technical character of an invention, i.e. contribute to producing a technical effect that serves a technical purpose, by its application to a field of technology and/or by being adapted to a specific technical implementation. The criteria for assessing these two situations are explained below.
Technical applications
When assessing the contribution made by a mathematical method to the technical character of an invention, it must be taken into account whether the method, in the context of the invention, serves a technical purpose (T 1227/05, T 1358/09).
Examples of technical purposes which may be served by a mathematical method are:
– controlling a specific technical system or process, e.g. an X-ray apparatus or a steel cooling process;
– determining from measurements a required number of passes of a compaction machine to achieve a desired material density;
– digital audio, image or video enhancement or analysis, e.g. de-noising, detecting persons in a digital image, estimating the quality of a transmitted digital audio signal;
– 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;
– providing a medical diagnosis by an automated system processing physiological measurements;
– simulating the behaviour of an adequately defined class of technical items, or specific technical processes, under technically relevant conditions (see G-II, 3.3.2).
A generic purpose such as "controlling a technical system" is not sufficient to confer a technical character to the mathematical method. The technical purpose must be a specific one.
Furthermore, the mere fact that a mathematical method may serve a technical purpose is not sufficient, either. The claim is to be functionally limited to the technical purpose, either explicitly or implicitly. This can be achieved by establishing a sufficient link between the technical purpose and the mathematical method steps, for example, by specifying how the input and the output of the sequence of mathematical steps relate to the technical purpose so that the mathematical method is causally linked to a technical effect. See G-VII, 5.4.2.4 for a worked-out example.
Defining the nature of the data input to a mathematical method does not necessarily imply that the mathematical method contributes to the technical character of the invention (T 2035/11, T 1029/06, T 1161/04). Whether a technical purpose is served by the mathematical method is primarily determined by the direct technical relevance of the results it provides.
Technical implementations
A mathematical method may also contribute to the technical character of the invention independently of any technical application when the claim is directed to a specific technical implementation of the mathematical method and the mathematical method is particularly adapted for that implementation in that its design is motivated by technical considerations of the internal functioning of the computer (T 1358/09). For instance, the adaptation of a polynomial reduction algorithm to exploit word-size shifts matched to the word size of the computer hardware is based on such technical considerations and can contribute to producing the technical effect of an efficient hardware implementation of said algorithm.
If the mathematical method does not serve a technical purpose and the claimed technical implementation does not go beyond a generic technical
implementation, the mathematical method does not contribute to the technical character of the invention. In such a case, it is not sufficient that the mathematical method is algorithmically more efficient than prior-art mathematical methods (see G-II, 3.6).
3.3.1 Artificial intelligence and machine learning
Artificial intelligence and machine learning are based on computational models and algorithms for classification, clustering, regression and dimensionality reduction, such as neural networks, genetic algorithms, support vector machines, k-means, kernel regression and discriminant analysis. Such computational models and algorithms are per se of an abstract mathematical nature, irrespective of whether they can be "trained" based on training data. Hence, the guidance provided in G-II, 3.3 generally applies also to such computational models and algorithms.
When examining whether the claimed subject-matter has a technical character as a whole (Art. 52(1), (2) and (3)), expressions such as "support vector machine", "reasoning engine" or "neural network" are looked at carefully, because they usually refer to abstract models devoid of technical character.
Artificial intelligence and machine learning find applications in various fields of technology. For example, the use of a neural network in a heart-monitoring apparatus for the purpose of identifying irregular heartbeats makes a technical contribution. The classification of digital images, videos, audio or speech signals based on low-level features (e.g. edges or pixel attributes for images) are further typical technical applications of classification algorithms. Classifying text documents solely in respect of their textual content is however not regarded to be per se a technical purpose but a linguistic one (T 1358/09). Classifying abstract data records or even "telecommunication network data records" without any indication of a technical use being made of the resulting classification is also not per se a technical purpose, even if the classification algorithm may be considered to have valuable mathematical properties such as robustness (T 1784/06).
Where a classification method serves a technical purpose, the steps of generating the training set and training the classifier may also contribute to the technical character of the invention if they support achieving that technical purpose.
3.3.2 Simulation, design or modelling
Claims directed to methods of simulation, design or modelling typically comprise features which fall under the category of mathematical methods or of methods for performing mental acts. Hence, the claimed subject-matter as a whole may fall under the exclusions from patentability mentioned under Art. 52(2)(a)(c) and (3) (see G-II, 3.3 and 3.5.1).
The methods considered in this section, however, are at least partially computer-implemented so that the claimed subject-matter as a whole is not excluded from patentability. When determining which features contribute to
the technical character of the invention, the same principles as outlined in G-II, 3.3 apply.
The computer-implemented simulation of the behaviour of an adequately defined class of technical items, or specific technical processes, under technically relevant conditions qualifies as a technical purpose (T 1227/05). Examples are the numerical simulation of the performance of an electronic circuit subject to 1/f noise or of a specific industrial chemical process.
Such computer-implemented simulation methods cannot be denied a technical effect merely on the ground that they precede actual production and/or do not comprise a step of manufacturing the physical end product.
In contrast, the simulation of non-technical processes, such as a marketing campaign, an administrative scheme for transportation of goods or determining a schedule for agents in a call centre, does not represent a technical purpose. In addition, a generic limitation, such as "simulation of a technical system", does not define a relevant technical purpose.
In the context of computer-aided design of a specific technical object (product, system or process), the determination of a technical parameter which is intrinsically linked to the functioning of the technical object, where the determination is based on technical considerations, is a technical purpose (T 471/05, T 625/11).
For example, in a computer-implemented method of designing an optical system, the use of a particular formula for determining technical parameters, such as refractive indices and magnification factors, for given input conditions so as to obtain optimal optical performance makes a technical contribution. As another example, determining by iterative computer simulations the maximum value that an operating parameter of a nuclear reactor may take without risking rupture of a sleeve due to stress makes a technical contribution.
In contrast, where the computer-aided determination of the technical parameters depends on decisions to be taken by a human user and the technical considerations for taking such decisions are not specified in the claim, a technical effect of improved design cannot be acknowledged since such an effect would not be causally linked to the claim features (T 835/10).
If a computer-implemented method results merely in an abstract model of a product, system or process, e.g. a set of equations, this per se is not considered to be a technical effect, even if the modelled product, system or process is technical (T 49/99, T 42/09). For example, a logical data model for a family of product configurations has no inherent technical character, and a method merely specifying how to proceed to arrive at such a logical data model would not make a technical contribution beyond its computer-implementation. Likewise, a method merely specifying how to describe a multi-processor system in a graphical modelling environment does not make a technical contribution beyond its computer-implementation.
Reference is made to G-II, 3.6.2 related to information modelling as an intellectual activity.
3.4 Aesthetic creations
Subject-matter relating to aesthetic creations will usually have both technical aspects, e.g. a 'substrate' such as a canvas or a cloth, and aesthetic aspects, the appreciation of which is essentially subjective, e.g. the form of the image on the canvas or the pattern on the cloth. If technical aspects are present in such an aesthetic creation, it is not an aesthetic creation 'as such' and it is not excluded from patentability.
A feature which might not reveal a technical aspect when taken by itself could have a technical character if it brings about a technical effect. For example, the pattern of a tyre tread may actually be a further technical feature of the tyre if, for example, it provides improved channelling of water. On the contrary, this would not be the case when a particular colour of the sidewall of the tyre serves only an aesthetic purpose.
The aesthetic effect itself is not patentable, neither in a product nor in a process claim.
For example, features relating solely to the aesthetic or artistic effect of the information content of a book, or to its layout or letterfont, would not be considered as technical features. Neither would features such as the aesthetic effect of the subject of a painting or the arrangement of its colours or its artistic (e.g. Impressionist) style be technical. Nevertheless, if an aesthetic effect is obtained by a technical structure or other technical means, although the aesthetic effect itself is not of a technical character, the means of obtaining it may be. For example, a fabric may be provided with an attractive appearance by means of a layered structure not previously used for this purpose, in which case a fabric incorporating such structure might be patentable.
Similarly, a book defined by a technical feature of the binding or pasting of the back is not excluded from patentability under Art. 52(2) and (3), even though it has an aesthetic effect too. A painting defined by the kind of cloth, or by the dyes or binders used, is likewise not excluded.
A technical process, even if it is used to produce an aesthetic creation (such as a cut diamond), is nevertheless a technical process which is not excluded from patentability. Similarly, a printing technique for a book resulting in a particular layout with aesthetic effect is not excluded, and nor is the book as a product of that process. Again, a substance or composition defined by technical features serving to produce a special effect with regard to scent or flavour, e.g. to maintain a scent or flavour for a prolonged period or to accentuate it, is not excluded.
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