9.2.12 Assessment of features relating to mathematical algorithms
Overview
9.2.12 Assessment of features relating to mathematical algorithms
As mathematical methods as such are deemed to be non-inventions, mathematical algorithms may contribute to the technical character of an invention only in so far as they serve a technical purpose (Art. 52(2) and Art. 52(3) EPC), (T 1784/06; T 208/84; T 1227/05, OJ 2007, 574; T 1358/09; T 306/10; T 566/11; T 2035/11; T 2249/13; T 2330/13). This is a very topical issue as it also has a bearing on the rapidly expanding field of artificial intelligence.
It was in T 208/84 that a distinction began to be made between abstract concepts on the one hand and technical processes involving and modifying a "physical entity", such as an electrical signal, on the other hand. It was held that a basic difference between a mathematical method and a technical process could be seen in the fact that a mathematical method or a mathematical algorithm was carried out on numbers (whatever these numbers may represent) and provided a result also in numerical form, the mathematical method or algorithm being only an abstract concept prescribing how to operate on the numbers. No direct technical result was produced by the method as such. In contrast thereto, if a mathematical method was used in a technical process, that process was carried out on a physical entity (which could be a material object but equally an image stored as an electric signal) by some technical means implementing the method and provided as its result a certain change in that entity.
In T 1161/04 the invention related to an apparatus for rebalancing a stock index. The board held that the data represented nothing but numbers, arguably describing "physical entities", which necessarily require interpretation by a human being without any further interaction with, or modification of, the technical system.
On the other hand, the board in T 1814/07 held that an automated collection and analysis patient care system and method for ordering and prioritising multiple health disorders to identify an index disorder was a mathematical method but was used in a technical process. This process was carried out on a physical entity by some technical means implementing the method and provided as its result a change in that entity, and so it contributed to the technical character.
In T 2418/12 an algorithm suggested related terms. This was considered not to be a technical problem; whether terms were "related" to each other was a cognitive or linguistic matter and not a technical issue (T 1358/09, T 2230/10, T 2439/11). This was in line with the case law of the boards of appeal, which generally holds that algorithmic efficiency is not a technical effect (see e.g. T 1784/06, T 42/10, T 1370/11).
More recently, there is a line of case law, which takes a critical view of the Guidelines for Examination in respect of mathematical methods.
In T 1910/20, the appellants had argued that the pattern enhancement algorithm as indicated in the distinguishing features was above all a mathematical method which contributed to the technical character of the invention, not only by virtue of the resultant presentation of information but also on account of the derivation of a patient's physiological state. They referred to the Guidelines for Examination in the EPO, EPC Guidelines G‑II, 3.3 (essentially unchanged in the April 2025 version), which stated the following: "If steps of a mathematical method are used to derive or predict the physical state of an existing real object from measurements of physical properties, as in the case of indirect measurements, those steps make a technical contribution regardless of what use is made of the results." The appellants had argued that a patient was also an existing real object and their physiological state, in terms of patterns in their blood glucose data, was a physical state. They further referred to T 1785/14 as support for their argument.
The board stated that the appellants' argument seemed to build on a misleading blanket statement they had cited from the Guidelines. In the preceding sentence of the Guidelines, referring to relevant case law, it was correctly stated that "[d]efining the nature of the data input to a mathematical method does not necessarily imply that the mathematical method contributes to the technical character of the invention". In particular, to contribute to technical character, it was not sufficient that the quantities processed by a mathematical method represented physical parameters. As arguably all physical parameters represent a physical state of an existing real object, it followed that the subsequent sentence in the Guidelines, at least at its level of generality ("those steps make a technical contribution regardless of what use is made of the results"), was wrong.
Moreover, the board held that it could not be derived from T 1785/14 that defining the input to a mathematical method as physiological parameters would suffice to contribute to the technical character of the invention. The board in that case had found that the distinguishing features solved the technical problem of allowing for better accuracy when determining the sampling time for an individual animal (T 1785/14). That was not comparable with the case in hand, in which the appellants had been unable to demonstrate any technical effect of the presentation of cluster centres produced by the mathematical steps of claim 1 of any of the requests.
As already set out above, according to the board in T 761/20, although G 1/19 was related to computer-implemented simulations, its reasons apply to computer-implemented methods other than simulations as well. Although a direct link with physical reality may not be required for a technical effect to exist, an at least indirect link to physical reality, internal or external to the computer, is indeed required. The link can be mediated by the intended use or purpose of the invention ("when executed" or when put to its "implied technical use").
In T 1741/22 the invention involved receiving measurements of glucose levels in a patient's blood and generating from them maximum and minimum measured glucose values, for the purpose of identifying potential medical outlier values. While in T 2681/16, the board had acknowledged that, "providing an overall measure of the glucose variability… and a prediction of glycemic events", was technical, the board in the case at hand took a different view. The board held that, In the present case as well as in T 2681/16, the interaction with the physical reality ended once blood glucose measurements were carried out. The provision of overall glucose variability and a prediction of glycemic events were held to be mathematical steps or intellectual activities which took place in the absence of this interaction with the physical reality and were therefore held not to be measurements in this sense.
In relation to the example in Guideline G‑II, 3.3 (unchanged in the version of April 2025), which states that "providing a medical diagnosis by an automated system processing physiological measurements" is an example where a mathematical method can make a technical contribution quoted, the board stated that, "As providing a "medical diagnosis" - whether done by a physician or by an automated system - is devoid of any technical character (see e.g. decision G 1/04, points 5.3 and 6.3 of the Reasons), 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"
- T 0847/24
In T 847/24 the contested patent related to a method for configuring a surgical guide and an associated implant for maxillofacial osteosynthesis, both customised to a patient. The board found that feature 1.6 was the only feature distinguishing the subject-matter of claim 1 of the main request from the method disclosed in D2. Feature 1.6 was non-technical when considered in isolation since it merely corresponded to the generation of abstract data representing a 3D structure for an implant..
Manufacturing an implant having the 3D structure determined in accordance with feature 1.6 would undisputedly allow this feature to have an impact on physical reality and thus to contribute to achieving a technical effect, for example by leading to a physical implant having the advantages mentioned by the appellant. However, the outcome of the claimed method was not a physical implant but merely abstract data defining a 3D structure for such an implant. Notably, claim 1 of the main request did not refer to any manufacturing step.
The board noted that the step of configuring the implant may involve further processing of the 3D structure determined in accordance with feature 1.6. However, even in that case, the configuring step would still merely produce further data defining the configured implant. The fact that the data produced by the claimed method, in defining the 3D structure of the configured implant, may reflect the properties of a physical object that may exist at some later point, namely the implant once manufactured did not change that conclusion. Rather, this physical object remains purely hypothetical as long as an implant having this structure is not manufactured. In the absence of a manufacturing step in claim 1, the data remains, first and foremost, mere data, which can be used in many different ways (see G 1/19).
In accordance with G 1/19, only those technical effects that are at least implied in the claim should be considered in the assessment of inventive step. If the claimed process results in a set of numerical values, whether a resulting technical effect can be considered in the assessment of inventive step depends on the further use of such data. If such further use is not, at least implicitly, specified in the claim, it is to be disregarded for this purpose. The board acknowledged that manufacturing the implant was a possible, even probable, use of this data. However, that was not sufficient for the data to contribute to the technical character of the claimed method.
The indication in feature 1.1 that the implant was "for maxillofacial osteosynthesis" does not imply a technical use of the data resulting from the claimed method but merely indicates the suitability of the implant for that medical use. Moreover, the data resulting from the claimed method is not defined in claim 1 as being specifically adapted for a technical use. This might have been the case, for example, if the claim had required the data to be formatted so as to be directly readable by, or usable in, a specific manufacturing apparatus, such as a 3D printing device. Claim 1, however, contains no such limitation. Furthermore, the board held that other uses which do not have any technical effect can also be realistically envisaged. For example, a comparison with existing implants. In such a case, no impact on physical reality would result from carrying out the claimed method.
The argument that the pre-operative 3D model was generated using data indicative of the anatomy of a real existing patient (feature 1.2) and that the implant configured by the method was customised so as to achieve a desired maxillofacial reconstruction for that patient, anchored the claimed method in physical reality and thus rendered the data produced by the method itself technical in nature was not persuasive.
Indirect measurements, in which the physical state of an object is typically calculated, are still related to physical reality and thus are of a technical nature, regardless of what use is made of the results (G 1/19). However, claim 1 is not directed to determining, by calculation, the physical state or a physical property of an existing object. Rather, it is directed to determining abstract data defining the 3D structure of an implant which does not yet physically exist. The fact that the method starts from data indicative of a pre-operative anatomy does not change the nature of the data ultimately produced by the claimed method, nor does it imply any further technical use of this data.
The board therefore concluded that the subject-matter of claim 1 of the main request did not involve an inventive step.
- T 0799/24
In T 799/24 the invention concerned a method and device for analysing optimisation of vehicle body joint position. The aim of the invention was to provide an analysis apparatus for determining an optimal location of an additional welded point to be added to a portion to join a part to an assembly of parts in consideration of the load acting on the automotive body and of the inertia force acting on a fitting or lid component of the automobile during driving. Claim 1 of the main request concerned an "arithmetic processing unit" or a CPU together with a display device including elements which were computer-implemented or performed a "computer-implemented" method. The board noted that the first hurdle mentioned in decision G 1/19, which requires that the claimed subject-matter as a whole must not fall under the "non-inventions" defined in Art. 52(2) and (3) EPC, was overcome since claim 1 related to an "arithmetic processing unit" together with a display device.
The second hurdle, mentioned in decision G 1/19, is where, as part of the inventive step assessment, it must be established which features of the invention contribute to its technical character, by providing a technical effect in the context of the invention as a whole..
According to the board, the formulation in claim 1 of the main request that additional welded point(s) were "to be added" to the automotive body to improve its stiffness during driving at least implicitly specified a further technical use. The board considered it implicit from claim 1 that the additional welded points of which the locations were determined would be added to the automotive body.
In the board's view, since the use of the analysis results was defined in the claim as being "for automotive body designing", leaving it open which further steps, technical or not, were to be performed with the analysis results, a potential further selection of a particular automotive body might also be based on the visual characteristics or appearance of the automotive body. However, the board was of the opinion that the selection of the automotive body was, in addition, also restricted to the selected additional welded points to be added to the automotive body.
The board noted that the optimisation analysis on the welding candidates applied at least one of the load, of which magnitude and direction were different at each joining portion. An additional welded point or an additional welded location that satisfied the optimisation analysis conditions, including maximising absorbed energy, was selected.
The analysis results used in the automotive body designing were, for example, "automotive body displacement amount". The possible use by the user of the displayed analysis results might be a cognitive exercise such as selecting the automotive body corresponding to the lowest displacement amount (G 1/19), but the board considered that the step of selecting the additional welded points contributed to the technical character of the invention.
The board further noted that the additional welded points of which the locations were determined or selected were "to be added to the automotive body" ("to improve the stiffness of the automotive body during driving"). In the board's view this wording at least implicitly specified a further technical use (G 1/19)..
The board considered that, even if the automotive body was a "prototype" and the additional welded points were added to this "prototype", this "prototype" would still be a physical object having at least some of the features of an automotive body.
The board noted that the Enlarged Board in G 1/19 required a simulation to be "accurate enough" or a simulation that reflects "reality" "accurately enough". In the present case, the automotive model constituted by the automotive body frame model and the chassis model together with the welded points at the joining portion(s) was considered by the board to reflect an automotive body (as "reality") "accurately enough". The board concluded that the subject-matter of claim 1 and dependent claim 2 of the main request involved an inventive step.
- T 0201/21
In T 201/21, the prior art disclosed a system for verifying authentication and ownership of a physical article. Each article included a label having a unique authentication code, pre-stored on a server database. The authentication code can be used to verify authenticity of an item by sending a query to a manufacturer's server. When a transaction takes place, the merchant registers ownership of the item by sending a registration request to the server including the article's unique code and a generated unique number. The registration only takes place if the code and number are not already associated with another sale.
Claim 1 differed from the prior art essentially in that card numbers are pre-stored in the central database and provided to the merchant on a brand property card (BPC), in that the database is populated with point of sale data upon entry of the numbered cards at a point of sale, in that a BPC card is provided to the user and its number is combined by the merchant with the unique identifier code in a registration request, and in that the registration is only possible if both the BPC card number and unique identifier code match a number and a code stored on the server and not associated with a sold physical article.
The appellant had argued that these features increased the security of the authentication method by providing a second authentication factor. In particular, it was argued that "... the combination of ... pairing [of the unique card and article numbers] in the database and the use of numbered cards that are not initially paired with particular physical items, results in ... strong authentication of physical articles". Moreover, they guarantee that the merchant has the authority to register the sold articles in the database.
The board found these arguments unconvincing. It regarded the general idea of protecting a transaction, here a registration, with a password as non-technical and also well known. The board further considered that the idea of using a predefined set of one-time passwords for user or merchant authentication also lacked technicality. Even when considered technical, this feature could not support an inventive step, as it corresponded to the well-known transaction authentication number (TAN) authentication procedure commonly used in online transactions. Making use of a server to store and verify the passwords or TAN numbers and of cards for distributing these to the merchant and customers was a straightforward implementation of this known procedure on well-known means.
The appellant had argued that the invention addressed the sales of luxury goods where customers appreciate tangible objects, such as certificates on elegant cards, and formulated the objective problem as "how to make the use of security tokens more attractive to a given population".
The board did not consider this an objective technical problem, as its formulation depended on the user's subjective preferences or expectations. From a technical point of view, the cards of claim 1 were merely a support for providing the merchant with the unique numbers to be used for the registration procedure. This was considered to be an obvious implementation possibility. Accordingly, the board concluded that claim 1 of the sole request lacked an inventive step over the prior art.