Many inventions in the field of bioinformatics (a term that we will use herein to encompass computational biology and medical informatics) are computer implemented methods or systems configured to implement such methods. As discussed in a previous post, the EPO uses a very specific approach to the assessment of patentability of such inventions, which is sometimes referred to as the “2 hurdles approach”. In this post, we will explore the second (and often most problematic) hurdle: inventive step (Article 56 EPC).
When assessing the inventiveness of a claim, the practice of the EPO is to consider only those features that contribute to the technical character of the invention. These features include: (a) features that are technical when taken in isolation, and (b) features that are non-technical when taken in isolation, but that in the context of the invention contribute to producing a technical effect serving a technical purpose.
What is a technical feature?
The European Patent Convention (EPC) does not define what constitutes a technical feature. Features that are technical when considered in isolation would include those that involve a physical step or technical entity. For example, a computing device (or any other hardware) is a technical feature, and so is a physical measurement step. Further, Article 52 EPC provides a list of things that are not considered inventions in a field of technology, i.e. features that would not be considered technical in isolation. This list includes, most notably in the present context, mathematical methods (such as clustering methods, and any other mathematical/statistical data analysis/processing methods that are frequently at the core of bioinformatics inventions, and data in isolation – even where the data represents a physical measurement), and the presentation of information (such as features associated with graphical user interfaces that can be essential to the practical benefits of a bioinformatics platform).
So in answer to that question: a computing device or a physical measurement step (e.g. “sequencing a DNA sample”) are technical features, but e.g. a mathematical method step (e.g. “identifying peaks in a series of curves by finding local maxima”) or the presentation of information (e.g. “displaying a series of curves together with indications of their local maxima”) are not technical features.
Therefore, features of a mathematical method and features of presentation of information will be completely ignored in the assessment of inventive step, unless it can be shown that serve a technical purpose in the context of the invention.
Here we look at how to do this for mathematical methods and for the presentation of information.
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