Introduction
The European Patent Office’s (EPO) Board of Appeal decision in T1249/22 (application number: EP16199043.7) delves into a critical question surrounding inventive step in the context of a technical implementation of a non-technical method. The case evaluates the intersection of technical and non-technical features under the framework of Article 56 EPC, with a particular focus on defining and assessing the inventive step for claims involving machine learning models.
Key issues include the sufficiency of reasoning provided by the examining division in assessing inventive step, the delineation of technical versus non-technical features, and reliance on prior art and common general knowledge. The Board ultimately highlighted the importance of clarity in formulating objections and the proper application of the problem-solution approach.
Summary of the Invention
The patent in question pertains to a method and system for developing and deploying analytical models, such as machine learning models, in computing environments. The invention addresses the need for seamless integration of model building, training, deployment, and monitoring in a scalable and efficient manner. Key features include:
Model Development and Training
- A model builder circuitry allows users to select and train analytical models, storing the trained models and associated metadata in a centralized database.
Model Deployment
- A deployment circuitry retrieves the stored models and deploys them on a compute engine for processing live incoming data.
Resource Management
- A resource allocation circuitry evaluates historical resource usage to optimize execution frequency and resource allocation for running models on compute engines.
Technical Features
- Deployment involves coordinating with message queues, creating pipelines, and monitoring generated results, ensuring robust data processing workflows.
The claimed system supports streamlined operations for data scientists and engineers, focusing on technical implementations of processes commonly associated with machine learning model lifecycles.
Key Points of the Decision
Procedural Background
The examining division rejected the patent on the grounds of lack of inventive step under Articles 52(1) and 56 EPC. The decision relied on the alleged common general knowledge, citing passages from a technical book on grid computing (D5). The appellant contested the reasoning and requested a remittal for further prosecution.
Legal and Procedural Issues
The Board identified several deficiencies in the examining division's reasoning:
- Identification of Technical and Non-Technical Features:The examining division merely underlined parts of the claim text to distinguish technical and non-technical features. This approach was deemed insufficient to establish a meaningful analysis of inventive step.
- Definition of the Technical Problem:The decision lacked a clear definition of the technical problem, which should integrate non-technical requirements into the problem-solution approach.
- Common General Knowledge:The reliance on D5 as evidence of common general knowledge was questioned, particularly regarding its suitability to represent universally known practices.
Appellant’s Arguments
The appellant argued that:
- D5 did not represent common general knowledge but rather separate pieces of prior art.
- The examining division failed to establish why specific combinations of features would have been obvious to the skilled person.
- The objection of lack of inventive step was unsubstantiated, lacking proper reasoning or a detailed problem-solution analysis.
Board’s Analysis and Findings
The Board found multiple procedural violations:
- Insufficient Reasoning:The examining division did not adequately explain how the alleged technical features and non-technical requirements interacted to address the claimed problem.
- Improper Use of Prior Art:The decision improperly combined unrelated aspects of D5 without justifying their relevance or providing a coherent problem-solution framework.
- Failure to Integrate Non-Technical Requirements:The examining division disregarded the non-technical aspects as part of the problem-solving process, contrary to established jurisprudence like T 641/00 (COMVIK).
Outcome
The decision was set aside, and the case was remitted to the examining division for further prosecution. The appeal fee was reimbursed due to a substantial procedural violation.
Lessons to Be Learned
- Proper Identification of Features
A clear distinction between technical and non-technical features is critical when evaluating inventive step. The use of underlining or simplistic labeling is insufficient for meaningful analysis. Features must be assessed within the context of their contribution to solving a technical problem. - Integration of Non-Technical Requirements
Non-technical aspects of a claim should be incorporated into the formulation of the technical problem. Ignoring these aspects risks overlooking the inventive contribution of the overall implementation. - Reliance on Common General Knowledge
Evidence cited as common general knowledge must be scrutinized for its suitability. Books or references that compile separate pieces of prior art cannot automatically qualify as common general knowledge. - Comprehensive Reasoning
Decisions rejecting inventive step must include detailed reasoning, outlining the relationship between cited prior art, the technical problem, and the claimed solution. Procedural fairness mandates transparency in formulating objections. - Importance of the Problem-Solution Approach
Adherence to the problem-solution approach is essential to ensure consistent and fair evaluations of inventive step. This includes properly framing the technical problem and evaluating whether the claimed invention provides a non-obvious solution.
Conclusion
Case T1249/22 highlights the challenges of assessing inventive step in patents involving technical implementations of non-technical methods. The decision underscores the need for rigorous reasoning, proper integration of non-technical requirements, and careful consideration of prior art and common general knowledge. For practitioners, this case serves as a reminder to structure claims and arguments to address both technical and procedural expectations.tions.
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Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.