T 0944/15 - Examining the invention not the claims

Key points

• In this examination appeal, claim 1 is directed to “A data processing method for controlling a process of monitoring the position of at least a part of a patient's body during a radiation treatment by means of a computer”.
• The Board considers the claim to be unclear. The Board also rejects the claim as being an unallowable medical method under Article 53(c) EPC, even though the Board agrees that “the claim is restricted to a method implemented on a computer”.
• The Board: “However, there is a distinction to be made between what the invention for which a patent shall be granted or shall not be granted is, as in Articles 52 and 53 EPC, and the claimed scope of protection”.
• As a comment, I think the Board could also have referred to ‘the claimed subject-matter’, the case is not about Art.69 EPC.
• The Board: “[The claims] do not, in themselves, define what the invention is. Instead, it is the corresponding teaching in the application which does that.”
• According to the Board this is in line with G1/08 r.6.4.2.1.
• The Board: “It is, therefore, not the claimed scope, but the corresponding teaching of the invention which is decisive for establishing what the invention is, and, for the purpose of Article 53(c) EPC, whether or not a claimed invention only concerns the operation of a device without any functional link to the effects of the device on the body (G 1/07 4.3.2).”
• “the Board first notes that it sees no technical effect in the claimed data processing steps: the result is just data stored in memory, with no influence on the computer's functioning or structure.”
• “In summary, in the light of the disclosure of the invention, the skilled person cannot conceive of the invention without the steps of initiating the monitoring [of the patient during radiation therapy] and using the result [in the therapy, e.g. stopping the radiation exposure], which create a functional link to the method of treatment.”
• “In conclusion, paraphrasing G 1/07, the claimed method is not merely directed to the control of the device, because the teaching of the invention is not complete without the steps of initiating the monitoring and using the result; their necessary consideration as part of the teaching of the invention means that claim 1 of the main request defines a method of treatment excluded under Article 53(c) EPC.”
  
  
• In AR-4, the claims are directed to a computer program. Is this claim also excluded under Art.53(c)?
• The Board, after considering that the travaux préparatoires are not helpful: “It is, then, the task of the Office to consider, according to the case at hand, the nature and the patentability of an invention related to a computer program. When the computer program is related to a method of treatment or surgery, these considerations extend to whether it is to be excluded as such a method or allowed as a product for use in one.”
• The Board: “ As the method is excluded, so the computer program should also be excluded: even if indirectly conferred, a protection for a method of treatment goes against the ratio legis of Article 53(c) EPC (G 1/07, point 3): ... that medical practice must not be hindered by patent protection ... Any factor which could interfere with this, such as licence fee considerations, should therefore be carefully ruled out which might however prove difficult, if patents were granted on medical methods.”
• “All of the above reasons lead to the conclusion that, the computer program of claim 1 of the fourth auxiliary request is an invention only by virtue of the property that, when running, it implements a method of treatment excepted from patentability under Article 53(c) EPC. It is, for that reason, excluded from patentability.”
• “the Board disagrees with the statement in the Guidelines for Examination (November 2019) at G.II, 4.2.1, to which the appellant referred.”
• The attempted disclaimers are not allowed either.
• The appeal is dismissed.
  
  
• The Boards full legal reasoning is very detailed. I'm not sure why the Board didn't give the decision a headnote / catchword / publication code A, B or C.

EPO T 0944/15

https://www.epo.org/law-practice/case-law-appeals/recent/t150944eu1.html

Main request, Article 53(c) EPC

14. The appellant referred to T 0641/00, "Two identities/COMVIK", OJ 2003, 352 and argued that the claim scope was clearly restricted to something that happened only in a computer. It was the prerogative of the applicant to define the scope of protection and thereby the invention. Here, the invention was a data processing method confined to the computer, i.e. a computer-implemented method, and was technical because it processed technical data. So it was an invention that could be completely defined by what happened in the computer.

Highlights EPO Case Law 2019

2019 was quite a busy year for the Boards of Appeal. A selection of the highlights:

• G1/18: If the appeal fee is paid late, the appeal is deemed not to have been filed.
• G2/19: Oral proceedings can take place in Haar. Moreover, appeals of third parties (in the sense of Article 115) can be dismissed without oral proceedings. Such appeals have no suspension effect.
  As a comment, I think there is more to say about these two decisions (e.g. they were probably mostly concerned with ensuring that the filing of divisional applications post-grant is impossible), but I'm still waiting for the English translation in the OJ.
• T1063/18 (written decision) Rule 28(2) EPC (about plants obtained with essentially biological methods) is in conflict with Article 53(b) EPC. Pending referral G3/19 of the President challenges this holding.
• T1085/13: A purity-level feature can provide novelty to a claim directed to a small molecule. Older case law is held obsolete in view of the 'gold standard' of G2/10. The same happened to the test for novelty of sub-ranges in the GL (see also this article of Derk Visser and this article of Roel van Woudenberg) and the "essentiality test" (see e.g. T1189/16 and T 85/16; GL 2018).
• T1360/13: this patent was revoked because the formal drawings filed during prosecution resulted in an inescapable trap. Again G2/10 requires reconsideration of established practice. Note the Board's view that generally “after grant, any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation cannot be removed from the patent without infringing Article 123(3) EPC.”
• T54/17: Interruption of proceedings (R.142) is restricted by the principle of good faith. Similarly to G2/19, a rule in the EPC that appears rather absolute based on its wording is held to be not without exception.
• T2707/16 and T2377/17: The severe delays in the proceedings are a substantial procedural violation. This (in my view) rather unavoidable development of the case law (in view of the ECHR) took place this year. 
• T237/15: Determining optimum dosage regiment is a matter of routine experimentation. I expect that this decision will have great practical impact in the pharma field. Moreover, is the Board perhaps raising the bar for second medical use claims?
• T1904/14, T1304/18,  T23132/14 and T1979/13: In appeals against refusals, applicants must carefully address each and every ground of refusal in the Statement of grounds. Otherwise, the appeal is inadmissible (so no repairing the deficiency during the appeal). So, as an example, your extensive arguments that claim 1 is novel and inventive, do not help if you forget to address the clarity objection against dependent claim 7.
• If you file a request for restoration of priority upon entry of the European phase, don't forget to pay the fee - there is no remedy available if you forget (J8/18; J1/19).
• The principle of good faith still applies to payments made with debit orders (T703/19). Hence, the EPO should have informed the payer that the debit order was invalid and the payer is protected against the EPO's failure to do so (G2/97). This decision, in particular, confirms that the ADA are not completely outside the general procedural case law of the Boards. See also T0317/19
• In the category "puzzles rather than highlights", T683/14 wherein the Board held that “[t]he appeal was not remitted and has thus never been pending before the board”. The Board still decides that “[t]he requests for reimbursement of the appeal fee are refused.”

The above list is based on decisions published online in 2019 (backfile online publications excluded).
Edit 07.01.2019 to add "in my view".