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    Too broad, too early? AI platform for cell analysis found to lack technical character and sufficiency (T 0660/22, Cell analysis/

    The decision in T 0660/22 combines two of PatKat's favourite things, AI and cells! The patent application at issue related to a method for analysing image data about cells growing in culture. Unfortunately for the applicant, the Board of Appeal found the claims to either lack technical character or to relate to a technical method so broad that it was insufficiently disclosed. The decision thus highlights some of the challenges associated with trying to broadly protect software-based platform technology for biological research.  Legal background: Technical character The established EPO case law on computer-implemented inventions states that only those features contributing to the technical character of the claimed invention can be considered for inventive step. What it means for a feature to provide technical character is often open for debate. In G 1/19, the Enlarged Board of Appeal (EBA) found that calculated numerical data can have technical character if it has "an inherent technical quality" or if it serves a technical purpose. According to G 1/19, measuring physical quantities, whether directly or indirectly, can also be considered to have technical character. Correlating the elements Background: Cell analysis device and method The patent application at issue in T 0660/22 was filed jointly by the University of Tokyo and Nikon (EP 14909103.5). The invention related to a system of analysing and characterising cells. According to the application, conventional cell image analysis techniques that calculate correlations solely based on cell morphology information fail to fully represent the complex relationship between the elements and structures within a cell. The system described in the application was directed at providing a better method for analysing cells that could be used to make a model of the relationships between the elements within a cell, and e.g. evaluate the effects of compounds on cells in drug screening.  The system described in the application was configured to analyse a series of images obtained by a microscope, showing cells in a vessel to which a stimulus was applied. The application described a system for acquiring cell images and identifying elements visible in these images. The analysis method comprised calculating characteristic quantities of the cell elements, determining correlations between these quantities, and using these to establish correlations between the elements themselves. The measured qualities of the cells could be, for example, intracellular protein localisation, aggregate formation, microfilament directionality, and protein complex aggregation.  The application as filed included examples in which the system identified correlations between different cellular elements. The system was then used to build models showing how an element (protein) controlled other elements (nucleus, cytoplasm) in the cell by detecting strong correlations between characteristic data. The model was visualised as a graphical representation with elements forming nodes and correlation strengths represented by line thickness between elements. The technical character of measurement data The key issue on appeal was whether the claimed method of calculating correlations between characteristic quantities extracted from cell images, and constructing a graphical model based on these correlations, provided a technical contribution (Article 56 EPC, G 1/19) The applicant argued that the construction of the model was technical in nature as it constituted an indirect measurement of physical reality in the sense of G 1/19. The characteristic quantities of the cells were associated with cell properties and extracted from images of cells, thus constituting measurements of physical reality. The applicant compared the invention to a technical tool such as a thermal camera, arguing that even if using such a tool involves complex calculations, the tool still provides indirect measurements of physical reality.  The Board of Appeal with the applicant on the critical point of whether the claimed method constituted a measurement method in the sense of G 1/19. For the Board of Appeal, any measurement method within the meaning of G 1/19 "must be intended to determine a specific and predefined physical quantity" (r. 13.1). For the Board of Appeal, a method may be called "indirect" if it determines a physical quantity of interest based on measurements of different physical quantities and a known factual relationship between these quantities (r. 13.1). Critically, the Board of Appeal found that unless correlations between physical quantities correspond to a known factual relationship, they are "just data, which may be used, for example, to gain scientific knowledge" (r. 13.4, quoting G 1/19) and obtaining them does not constitute a measurement within the meaning of G 1/19. The Board thus drew a crucial distinction between methods that determine a specific and predefined physical quantity, which have technical character, and those that merely provide information which a scientist can use to investigate physical relationships, which lack technical character (r. 13.1-13.4). The Board of Appeal found that it was "neither self-evident nor explained in the application that each of the many individual 'characteristic quantities' [...] actually represents a physical quantity of the cell" (r. 14). Even if these quantities represented physical quantities, the correlation values were "not set out as measurements of any specific and predefined physical phenomenon relating two quantities" (r. 14.1). The Board of Appeal thus concluded that neither the claimed device or method provided indirect measurements in the sense of G 1/19. The claimed invention was thus found to lack any technical contribution and hence could not be considered to involve an inventive step (r. 15). Sufficiency of disclosure for the cell manufacturing method The Board of Appeal also considered an auxiliary request claiming a cell manufacturing method. The auxiliary request attempted to overcome the technical character objections raised for the main request by embedding the analysis method within a cell manufacturing process. The claim related to an iterative process for manufacturing cells that continued until a predetermined criterion was satisfied. However, this claim stumbled on the hurdle of sufficiency before inventive step was even considered. The Board of Appeal particularly found that claim 1 of the auxiliary request was extremely broad, and covered any predetermined criterion. For the Board of Appeal, it was also possible that cells satisfying some of the criteria might not even exist (r. 21). For other criteria the Board of Appeal found that it would "be unclear how to create suitable cells, for instance due to missing insights in biochemical engineering" (r. 21).  Thus, for the Board of Appeal, even for theoretically achievable criteria, the application provided insufficient guidance on how to actually create cells with the desired properties. The applicant argued that skilled persons could iteratively modify cells so as to obtain ones with desired characteristics and could assess the evolution of the graphical model over time in order to understand how to create cells with a good chance of having the desired property. However, the Board found this insufficient to establish enablement across the claim's full breadth. Final thoughts The invention described in the patent application at issue in T 0660/22 is undoubtedly a great idea. Cells are exceedingly complicated biological systems, and methods for analysing and modelling their behaviour and response offer great research opportunities. The issue for the applicants in this case was filing too early and claiming too broad. The decision thus highlights some challenges to patenting AI and data analysis tools for biological research. Whilst these tools may be valuable for scientific discovery, they may not satisfy the technical character requirement unless they can be linked to specific physical measurements or technical purposes. Any technical purposes relied on should also not be so broad as to raise insufficiency issues.  Interestingly, along similar lines as the invention described in T 0660/22, the Institute of Cancer Research (ICR) has just published details of a new AI model they have developed for predicting drug responses based on 3D cell shape changes. The model, MorphoMIL, uses deep learning to profile 3D cell shapes following exposure to drug compounds. According to the paper, a patent application has been filed for MorphoMIL (not yet published). It will be interesting to see what claiming strategy the inventors of MorphoMIL will take in Europe in order to avoid the potential pitfalls highlighted by T 0660/22.  Further reading IP strategy for AI-assisted drug discovery (Oct 2024) AlphaFold: From Nobel Prize to drug-discovery gold mine? (Nov 2024) Insilico Medicine: Lessons in IP strategy from a front-runner in AI-drug discovery (Feb 2025)

    G 2/21 applied to software inventions (T 0687/22)

    The EPO Board of Appeal decision in T 0687/22 confirms beyond doubt the relevance of G 2/21 to software inventions. The decision in T 0687/22 links the case law from G 1/19 and G 2/21 to highlight the importance of establishing a credible technical effect of software invention. The Patentee in the case made several attempts to formulate an objective technical problem solved by the invention based on several suggested technical effects. The Board of Appeal, citing both G 2/21 and G 1/19, was not convinced that the necessary criteria for relying on these purported technical effects were met.   Disclosure of a technical effect (G 2/21) In G 2/21 the EBA found that post-filed evidence for technical effects can be used if "the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention." (Headnote II). Subsequent Board of Appeal decisions have found that, following G 2/21, it is not necessary for applications to explicitly mention the technical effect relied on for inventive step or to provide experimental evidence in support of a technical effect. The broad applicability of G 2/21 According to T 0116/18, the technical effect relied on for inventive step only needs to be "conceptually comprised by the broadest technical teaching" and recognisable as "necessarily relevant to the claimed subject-matter." T 2465/19 found that “the technical effect of an invention over the closest prior art need not be explicitly stated in the application, as long as it is derivable from the original application, in particular since the closest prior art may not have been known to the applicant when drafting it”. T 1994/22 nonetheless clarified that vague statements like providing "a quality product" are insufficient to support specific undisclosed technical effects (IPKat).  The applicability of G 2/21 to software inventions Many of the Board of Appeal decisions to apply G 2/21 have been in biotech and chemistry field, including cases relating to a second medical use (T 0258/21, IPKat),  polymorphs (T 1994/22, IPKat), and cheese (T 0629/22, IPKat). However, G 2/21 has also been applied to other fields, including semiconductors (T 2465/19, IPKat). Indeed, G 2/21 is relevant in any case for which there is a question about the disclosure of a technical effect relied on for inventive step in the application as filed (IPKat).  There is a clear connection between G 2/21 and one of the central issues for software inventions, that of establishing features of the claimed invention that contribute a technical effect. According to the established case law in the software field, a feature may be only be relied on as contributing a technical solution to the objective problem to be solved in view of the closest prior art if the features provides a technical effect (see Case Law of the Boards of Appeal, I-D-9.2.8), see also the EBA decision in G 1/19). Given the importance of identifying a technical effect for the patentability of software inventions, the guidance from G 2/21 on the disclosure and evidence requirements for technical effects relied on for inventive step is highly relevant to the field.  Establishing a technical effect of a software invention (T 0687/22) The patent at issue in T 0687/22 related to active occlusion cancellation in hearing devices (EP 3340653). T 0687/22 related to an appeal of the opposition division (OD) decision to maintain the patent in amended form. The Opponent appealed the OD decision, requesting that the patent be revoked.  The central issue in the case was whether the distinguishing features of the invention compared to the closest prior art provided a credible technical effect that solved an objective technical problem. Despite numerous attempts by the Patentee to identify a technical problem solved by the invention, including improved energy efficiency, circuit stability and flexibility, the Board of Appeal could not "identify any technical effect that can be credibly associated" with the distinguishing features (r. 2.3).  The Patentee submitted the alternative argument that the objective technical problem could be formulated as merely "providing for an alternative modification of the resulting signal based on the signal from the ear-canal microphone." However, the Board of Appeal rejected this effect for being too broad, noting that "a modification introduced solely for the sake of differentiation from the prior art simply means that, at most, the novelty requirement of Article 54 EPC is met" but does not guarantee compliance with Article 56 EPC (r. 2.3.4).  Given the absence of a credible technical effect that could be associated with the distinguishing features of the claimed invention, the Board of Appeal concluded that none of the requests were allowable under Article 56 EPC. As a result, the patent was revoked. Relevance of G 2/21 to software inventions  Interestingly, in its reasoning in T 0687/22, the Board of Appeal made a direct reference to both G 2/21 and G 1/19: [w]hen following the problem-solution approach to assess inventive step in the case in hand, a technical effect associated with the distinguishing feature(s) of the invention must be identified on the basis of the claim wording to establish a credible objective technical problem (see e.g. G 1/19, Reasons 82 and 124 as well as G 2/21, Reasons 25). If no such technical effect can be identified, there is not necessarily any technical problem to be solved (see e.g. G 1/19, Reasons 49).  In reason 25 of G 2/21, cited by the Board of Appeal, the EBA noted:  The technical problem must be derived from effects directly and causally related to the technical features of the claimed invention. An effect could not be validly used in the formulation of the technical problem if the effect required additional information not at the disposal of the skilled person even after taking into account the content of the application in question. T 0687/22 thus confirms the clear relevance of G 2/21 to software inventions, and specifically to the criteria for establishing a technical effect of the distinguishing features of the invention in the application as filed.  A possible avenue for the Patentee to rescue the case might have been to provide some post-published evidence of their purported technical effects. The Board of Appeal would then have had to assess whether the criteria of G 2/21 were met, namely whether the technical effect relied on was encompassed and embodied by the application as filed. However, no post-published evidence was submitted, and so this issue was not considered.  Final thoughts While the focus of commentary about G 2/21 has been on its relevance to biotech and chemistry cases, its principles are equally applicable to software inventions. T 0687/22 confirms the relevance of G 2/21 to software inventions, and particularly the need to both establish a credible technical effect for your invention that is identifiable from the application as filed. G 2/21 was not focused on the concept of plausibility, given that it was primarily concerned with the disclosure requirements for a technical effect relied on for inventive step. However, the focus of the decision in T 0687/22 on the credibility of the alleged effects is also a reminder that the concept of plausibility/credibility in inventive step is highly applicable to software inventions. More on this to follow!  Further reading The relevance of G 2/21 to machine learning inventions (T 2803/18) (Aug 2023)

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