Inventive Step at the EPO - Back to Reality

The patent application subject to T 1741/22 relates to a medical data processing system, and therefore technology that touches on the realms of computer programs and mathematical methods. In Europe, the patentability of inventions in these fields is usually considered in earnest during the assessment of inventive step. When applying the well-established problem-solution approach, the EPO will generally only take into account the technical features of a claim, which provide a technical contribution. And herein lies the crux of the decision - what makes a technical contribution?

Overview of the Case

The patent application presented a system for analysing glucose monitoring data. Glucose monitoring data is input to the system, and a number of processing steps are performed by the system using the glucose monitoring data, to output minimum and maximum glucose levels of a person on a display device. After considering the clarity of several requests of the appellant, the Board’s decision came down to Claim 1 of auxiliary request 10, which recites:

1. A system for analysing glucose monitoring data indicative of a glucose level in a bodily fluid, comprising: 

an input device, 

a data processing device, 

an output device, 

a display device, and 

machine-readable instructions that are executed by the data processing device, wherein the machine-readable instructions cause the data processing device to:

receive continuous glucose monitoring data via the input device, the continuous glucose monitoring data 

indicating a glucose level sampled for a person in a bodily fluid at a plurality of sample times over a measurement time period in a continuous glucose level measurement, and 

comprising a plurality of continuous glucose profiles, each of the glucose profiles comprising a plurality of glucose values with a glucose value for each of the plurality of sample times over the measurement period, wherein the plurality of glucose profiles is determined on different days by sampling the glucose level on each day over the measurement period, wherein the measurement period is 24 hours;

for the plurality of continuous glucose profiles, determine a plurality of minimum glucose values and/or a plurality of maximum glucose values for a selected group or each of the plurality of respective sample times;

provide first display signals representing the plurality of minimum glucose values and/or the plurality of maximum glucose values for the selected group or each of the plurality of respective sample times;

output the first display signals via the output device to the display device; and 

display a first graphical representation according to the first display signals on the display device.

Evaluation of Inventive Step

When considering inventive step, the Appellant argued that the key features of the above claim were the determining and displaying of minimum and maximum glucose values, and that these features set the claim apart from the prior art. The Appellant claimed these features improve glucose monitoring by identifying important outlier values that traditional methods, which employ percentiles, might miss. They emphasised that the technical effect did not lie in a mere "presentation of information" but in that "new data was generated". 

In response, the Board stated:

“if the mere generation of "new data" were sufficient to contribute to the technical character of the invention, Article 52(2) and (3) EPC would contain meaningless limitations of patentable subject-matter, as e.g. mathematical methods are supposed to constantly generate ‘new data’.”

So the provision of ‘generating new data’ was not considered sufficient enough on its own to confer technical character to the claim. But the Board went further, considering the features relating to ‘determining and displaying minimum and maximum glucose values’ specifically. The Board found that these features do not involve the actual measurement of glucose levels in the body - rather - they process already measured and received continuous glucose monitoring data to generate and display further "new data" (a plurality of minimum/maximum glucose values). According to the Board, such data is used to support a physician in their “purely intellectual deductive decision phases of diagnosis and therapy”.

The Appellant was prepared on this matter, and cited both an example of a technical contribution from the Guidelines for Examination (G-II, 3.3) and a previous decision T 2681/16, which the Appellant argued was analogous to the case in question. Indeed, the example from the Guidelines referred to "providing a medical diagnosis by an automated system processing physiological measurements", and the previous decision included reference to distinguishing features of a claim that were related to an algorithm to process already acquired, (i.e. measured, blood glucose) data points.

However, the Board was still not convinced, dismissed the arguments of the Appellant, and in doing so deviated from the previous decision T 2681/16. With respect to the example technical contribution in the Guidelines, the Board plainly stated:

‍“this example is clearly erroneous. As there is no further explanation, let alone a reference to any case law, the board sees no reason to speculate on how the Guidelines came up with this example”

Ultimately, the claim was found to lack an inventive step and the appeal was dismissed.

The Technical Contribution lies in ‘Physical Reality’

In their reasoning, the Board discussed the concept of a "physical reality" for the purpose of assessing a technical contribution. 

In the case in question, the interaction with a physical reality is the interaction with the blood to collect blood glucose measurements. That interaction was deemed to end once blood glucose measurements are carried out, and as such, the steps taken thereafter to generate the ‘new data’ were considered not to be ‘measurements’, but rather, ​​mathematical steps or intellectual activities that are inherently non-technical in the absence of an interaction with the physical reality.

Key Takeaways 

The decision T 1741/22, and the arguments regarding the apparent need for a ‘physical reality’ when assessing the technical contribution of a claim feature, represent a potentially significant deviation from precedent at the EPO. Indeed, the decision probably raises more questions than it answers. For example, how might this impact the patentability of technologies that are even further removed from physical reality (e.g. simulations, image processing, and AI-related inventions)?

We may see updates to the Guidelines in view of this decision, but a referral to the Enlarged Board of Appeal may ultimately be required for clarification.

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