New EPO Guidance on Patentability of Databases

By Jana Crewett, Consultant

On 1 March 2021, an amended version of the EPO Guidelines for Examination came into force, including a new chapter G-II, 3.6.4 entitled “Database management systems and information retrieval” providing more detail on exclusions from patentability.

The new chapter G.II.3.6.4 has reiterated the EPO’s distinction between “functional data”, which has a technical effect, and “cognitive data”, which does not contribute to the technical character of an invention.

The EPO has also clarified that database management systems and methods are always considered to involve technical means and will thus clear the first hurdle to patentability according to Art. 52(2) and 52(3) EPC. Regarding the second hurdle to patentability, wherein it is assessed whether the invention provides a technical solution to a technical problem, the amended Guidelines provide a few examples of features that would or would not contribute to the technical character of a claimed database management system. In general, these examples seem to be in line with the general reasoning of the EPO regarding patentability of computer-implemented inventions.

However, one example in the newly-added database chapter seems to deviate somewhat from the previous version of the Guidelines wherein “computational efficiency” on its own was not usually regarded as a valid technical effect when assessing inventiveness of a computer-implemented invention, unless a further, underlying technical effect can be shown.

At least for database management systems, the amended Guidelines now seem to strengthen the role of computational efficiency when assessing inventive step. New chapter G.II.3.6.4 states: “Optimising the execution of such structured queries with respect to the computer resources needed (such as CPU, main memory or hard disk) contributes to the technical character of the invention since it involves technical considerations concerning the efficient exploitation of the computer system.” However, the amended Guidelines further specify that “structured queries” are distinct from “information retrieval” and that information retrieval, wherein search results are classified e.g. by cognitive content, linguistic rules or other subjective criteria, does not make a technical contribution.

Hence, while this newly-added chapter in the EPO Guidelines does not seem to depart from the general line of argument outlined in the preceding Guideline chapters regarding various types of computer-implemented inventions, it does seem to provide a little bit of added room for manoeuvre for applicants who want to pursue a “computational efficiency” argument in assessing inventive step of database management systems or methods.

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact Jana Crewett or your usual Haseltine Lake Kempner advisor.