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Heralds of Spring – new Guidelines for Examination at the EPO

By Caroline Day, Partner

What to look forward to this spring?

Caroline Day, UK and European Patent attorney in our tech team, shares a personal outlook on what she’s looking forward to this spring and heralds the release of the preview of the new Guidelines for Examination at the EPO, which come into effect on 1 March.

Heralds of Spring

I’m one of those people who finds the post-Christmas winter months a bit of a drag.  To keep hope alive, I keep a relentless watch on what I refer to as ‘Heralds of Spring’.

Sunrise/sunset web pages feature among my most visited webpages and the sight of early flowers (Snow drops!  Crocuses!! Daffodils!!!) can truly make my day.  I’m not picky about what counts, and today I am focusing on one of the true heralds of Spring: the release of the Preview of the new Guidelines for Examination at the EPO!

Preview of the new Guidelines for Examination at the EPO

As in most years, the new Guidelines will come into force on the 1st March, but they first poke their heads through the earth in February in a preview version – it’s a little shy, in a drop down at the bottom of the page, but it’s definitely there.

As ever, I am drawn straight to the AI sections, and I think it’s going to be a good year.  It starts on a somewhat ominous note, in Part F III.3, saying that insufficient disclosure:

may be found in the field of artificial intelligence if the mathematical methods and the training datasets are disclosed in insufficient detail to reproduce the technical effect over the whole range claimed. Such a lack of detail may result in a disclosure that is more like an invitation to a research programme”

before cheering up considerably in Part G II 3.3.1.

Here, a new section tells us:

The technical effect that a machine learning algorithm achieves may be readily apparent or established by explanations, mathematical proof, experimental data or the like. While mere allegations are not enough, comprehensive proof is not required, either. If the technical effect is dependent on particular characteristics of the training dataset used, those characteristics that are required to reproduce the technical effect must be disclosed unless the skilled person can determine them without undue burden using common general knowledge. However, in general, there is no need to disclose the specific training dataset itself.”

This helps put the spectre of T 0161/18 into some context, leading to a pragmatic balancing of telling the skilled person what they need to know without excessive detail.

The other highlight of the amended Guidelines for me is the suggestion that it might become slightly easier to record assignments at the EPO: now that really would be a ray of sunshine!

Did anyone spot any other gems? Alternatively, what signs do you look for that winter is coming to an end? I’d love to hear from you! Connect with me on LinkedIn.

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