The European Patent Office (EPO) has recently undertaken revisions to its Guidelines for Examination. Included in the changes, due to come into force on 1 March 2021, is new section G-II, 3.6.4 that has been introduced to provide guidance on the examination of “database management systems and information retrieval”.
When computer-implemented inventions are examined by the EPO, a key question is whether the features of a claim can be considered to contribute towards the “technical character” of the invention. Only those features viewed as contributing to the technical character of the invention can count towards the invention’s inventive step. Challenges can often arise when assessing inventions that involve a mixture of technical and non-technical features, since determining exactly which features contribute to the technical character of the invention can sometimes be difficult.
The new section in the EPO’s Guidelines provides some useful clarifications on which features of database management systems may, or may not, contribute technical character. Included in the guidance are some explicit examples of features considered to contribute toward technical character:
- Features specifying the internal functioning of a database management system are likely to be viewed as involving technical considerations. The new Guidelines give an example in which “technical considerations are involved in improving system throughput and query response times by automatically managing data using various data stores with different technical properties such as different levels of consistency or performance”.
- Features which improve/optimise query execution are also likely to be viewed as contributing technical character. The new Guidelines make it clear that “Optimising the execution of such structured queries with respect to the computer resources needed (such as CPU, main memory or hard disk) contributes toward the technical character of the invention”.
- As a further example, “Data structures, such as an index, hash table or query tree, used in database management systems to facilitate access to data or for the execution of structured queries contribute to the technical character of the invention”. Thus, inventions involving such data or data structures may be viewed as having technical character.
The Guidelines make a clear distinction between features relating to how a database query is executed versus the actual information retrieval itself. Aspects of information retrieval that are founded in non-technical considerations cannot contribute toward technical character. For example, in the context of a web search to find “relevant” documents, “[i]f the method of estimating relevance or similarity relies solely on non-technical considerations, such as the cognitive content of the items to be retrieved, purely linguistic rules or other subjective criteria (e.g. items found relevant by friends in social networks), it does not make a technical contribution”. Therefore, where possible, it is important to target claims, and focus arguments, more on how a database management system operates or is structured so as to provide technical benefits as opposed to just the semantic nature of the data being stored in the database.
The approach taken by the EPO to database management systems and information retrieval remains an assessment of the presence or absence of technical character within the claim. With the updated Guidelines, the EPO has provided some much-appreciated clarity and confirmation of their practice in this important technology space.
If you have any questions regarding the above or the EPO’s approach to computer-implemented inventions, please contact your usual Boult Wade Tennant representative. We also recommend our recorded webinar, which provides an introduction to the EPO approach to computer-implemented inventions, and is free to view.