In this decision, the board of appeal assessed whether “illustrations”, in the context of a claim for a system, imply the presence of a concrete physical medium carrying the illustrations. Here are the practical takeaways from the decision T 0670/19 of 20.11.2020 of Technical Board of Appeal 3.2.01:
This European patent application concerns scales for performing clinical assessment of an individual, in particular to effectively rate lip fullness or the severity of perioral lines or oral commissures.
According to the application, such scales would be useful in both clinical practice and clinical trial research. Particularly, in clinical trial research, objective quantification is critical to measure the efficacy of an investigational treatment by comparing the severity of a condition before treatment to that measured after treatment. For a new treatment to achieve regulatory approval for marketing, its efficacy must be documented in clinical trials. Valid and reliable outcome measures are also important in evidence-based medicine to provide comparisons among similarly designed trials in the literature.
Here is how the invention was defined in claim 1:
Claim 1 (main request)A scale system for assessing at least one characteristic of the mouth area of an individual, the system comprising:
a lip fullness scale comprising illustrations of the mouth area of human subjects, the illustrations being organized in different categories representing levels of lip fullness; characterized in that the system further comprises:
a severity scale for perioral lines at rest comprising illustrations of the mouth area of human subjects, the illustrations being organized in different categories representing levels of severity of perioral lines at rest;
an oral commissure severity scale comprising illustrations of the mouth area of human subjects, the illustrations being organized in different categories representing levels of severity of oral commissure; and
a severity scale for perioral lines at maximum contracture.
Is it patentable?
The first-instance examining division had refused the patent application based on the conclusion that claim 1 related to abstract subject-matter excluded from patentability under Articles 52(2) and (3) EPC.
On appeal, the board did not agree that claim 1 is excluded from patentability and concured with the appellant that the invention as claimed does not relate to purely abstract subject-matter in the meaning of Articles 52(2) and (3) EPC. Instead, the board confirmed that claim 1 does have a technical character:
Claim 1 relates to a system comprising a plurality of scales each of them being associated with one specific characteristic of the mouth area, wherein each scale comprises in turn a plurality of illustrations representing different severity levels of the respective characteristic. The Board is convinced by the argument of the appellant that the feature “illustration”, in the context of a claim for a system, does imply the presence of a concrete physical medium carrying said illustrations and from which they can be viewed or displayed, for example a sheet of paper, a board, a display or the screen of a computer or tablet. The implicit presence of a physical medium does thus confer technical character to at least part of the subject-matter of the independent claim and this regardless of a possibly non-technical nature of the cognitive content of the illustrations carried by or displayed on the physical medium “per se”. Therefore, unlike the assessment of the examining division, the Board agrees with the appellant that the subject-matter of claim 1 is an invention within the the meaning of Article 52(1) EPC as it does not fall under the exceptions to patentability presented in Article 52(2) and (3) EPC.
Accordingly, the appeal was set aside and the board remitted the case to the examining division for further prosecution.
You can read the whole decision here: T 0670/19 of 20.11.2020
Bastian is a European patent attorney at BARDEHLE PAGENBERG. He specializes in software patents in Europe both from a prosecution and litigation point of view.