A common type of CII relates to subject-matter where all the method steps can fully be carried out by computer program instructions running on means which, in the context of the invention, provide generic data processing functions. Such means can, for example, be embedded in a personal computer, smartphone, printer etc. In such inventions, although different claim structures are possible, the set of claims usually starts with a method claim. Further claims in other categories with subject-matter corresponding to that of the method may be included to obtain complete protection of the invention. If the invention concerns software which can be loaded into memory, transmitted over a network or distributed on a data carrier, a claim to a computer program [product] may also be present in addition to a computer-implemented method. The category of a computer program [product] claim is distinguished from that of a corresponding computer-implemented method (T 424/03 and G 3/08). The following non-exhaustive list comprises examples of acceptable claim formulations (T 410/96, T 1173/97 and T 2140/08) in such a set of claims:
In formulation (ii) above, apparatus features of the means-plus-function type ("means for ...") are interpreted as means adapted to carry out the respective steps/functions, rather than merely means suitable for carrying them out (T 410/96). There is no particular preference of wording among "comprising means for", "adapted to", "configured to" or equivalents. In this way, novelty is conferred over an unprogrammed data processing apparatus or a data processing apparatus programmed to perform a different function.
An objection under Rule 43(2) should not be raised if the claim set comprises one claim from each of the above formulations (i)-(iv). In these cases, an invitation under Rule 62a(1) should therefore not be sent at the search stage since the requirements of Rule 43(2) are fulfilled.
However, an objection under Rule 43(2) may be raised if more than one claim is present from a heading (i)-(iv), for example if there are two or more computer program [product] claims which cannot be considered as falling under one of the exceptions of Rule 43(2) (F‑IV, 3.2).
When assessing the novelty and inventive step of a set of claims as defined above (formulations (i)-(iv)), the examiner usually starts with the method claim. If the subject-matter of the method claim is considered novel and inventive, the subject-matter of the other claims in a set formulated in accordance with the headings above will normally be novel and inventive as well, provided they comprise the features corresponding to all those which assure the patentability of the method.
Claims related to CII which are formulated differently to those in the formulations (i)-(iv) defined above are assessed on a case-by-case basis in view of the requirements of clarity, novelty and inventive step (see also F‑IV, 3.9.2, and G‑II, 3.6).
For example, when the invention is realised in a distributed computing environment or involves interrelated products, it may be necessary to refer to the specific features of the different entities and to define how they interact to ensure the presence of all essential features, rather than making a mere reference to another claim as in the above formulations (ii)-(iv). In such cases, further independent claims to interrelated products and their corresponding methods may also be allowable under Rule 43(2)(a) (F‑IV, 3.2).
Similarly, if user interaction is required, an objection under Art. 84 may arise if it is not possible to be determine from the claim which steps are carried out by the user.
Furthermore, a claim to a computer-implemented data structure in addition to formulations (i)-(iv) may be allowable under Rule 43(2) if it is defined by its own technical features, e.g. by a well-defined structure as in T 858/02, possibly with references to the corresponding method or system in which it is used. However, a computer-implemented data structure does not necessarily comprise the features of the process by which it is generated. It is not necessarily restricted by a method in which it is used, either. Therefore, a claim to a computer-implemented data structure usually cannot be defined merely by reference to a method or as an outcome of a process. For further information on data structures, see G‑II, 3.7.2.
Date retrieved: 24 November 2017
16 references found.Click X to load a reference inside the current page, click on the title to open in a new page.
EPC Implementing Rules
EPO Guidelines - F The European Patent Application
XGL F IV 3.9.2 Cases where method steps require specific data processing means and/or require additional technical devices as essential features
EPO Guidelines - G Patentability
EPO PCT GL - F (not assigned)
XGL-PCT F IV 3.8.1 Cases where all method steps can be fully implemented by generic data processing means