New version of the EPO Guidelines and life on Mars

The new Guidelines for Examination in the European Patent Office (EPO) entered into force on March 1, 2021. 

These Guidelines define how the EPO handles European patent applications in accordance with the European Patent Convention and its Implementing Regulations. 

This new version includes amendments both on the form and the merits.

An important amendment discussed hereunder concerns Paragraph 3.9.2 Cases where method steps define additional devices and/or specific data processing means of Part F - Chapter IV Claims (Art.84 and formal requirements).

This amendment is relevant to method and program claims where processes need a specific device to be used. In such a case, defining a computer program claim referring only to the method will normally lead to an objection under Art. 84 (clarity objection) if the step carried out by the specific technical means cannot be carried out by a generic data processing means.

This amendment may cause difficulties in assessing infringement on programs, for example, when the specific device is remote from the computer means and when the process is conducted both within such a specific device and generic computer means. Such generic computer means can be the ones of a distant server, while a sensor collects measurements and transmits them to the distant server. New paragraph 3.9.2 states that if the sensor is specific to obtain the measurement data to be processed, the sensor might be essential for defining the invention, and should be recited finally in all the independent claims. Therefore, there could be situations where the computer program cannot be claimed as such, nor a server programmed for processing the measurement data, apart from the sensor providing these data.

In one other example, for a method for processing images obtained with specific technical means (a specific device such as the Mars Supercam) with a new algorithm to detect life on Mars executed in a computer on Earth, a claim on the program for carrying out the method in the said computer will not be accepted if steps of the method are carried out by the specific camera. In this case, the specific type of camera should not be indicated in the method claim or the system claim, otherwise, the proof of infringement would be very difficult to get. 

In this example, in order to avoid issues, the patent application must be drafted so as to claim a method to handle image data with a given format (e.g. such data could then be provided from a data file storing the data previously acquired by the Supercam) in order to avoid the Supercam limitation in the independent claims.  A claim on a program comprising instructions to perform, when executed by a computer, the process on image data having the specific format should then be allowable.

In the example given above regarding the computing method and the program, it will be needed to make clear in the specification that the claimed method can start only with the use of the algorithm to process image data having the specific format, without any need to start from the capture of images on Mars. Otherwise, owing to an objection of an EPO examiner requiring that the specific device which is the Camera on Mars be present in the claims for clarity purpose, proofs of infringement on amended claims narrowed in scope would be difficult to oppose to infringers until at least 2030.