Case Law Review: Board of Appeal Decision T 1741/22

In the first instance, the application was refused for lack of inventive step. The Examining Division found that the method related to an arbitrary method of displaying data, and lacked technical character. During appeal proceedings, the appellant submitted that the technical effect in this case was "providing an overall measure of the glucose variability (i.e. equally sensitive to both hypo- and hyperglycaemic events) and a prediction of glycaemic events that were better than, or at least alternative to, those used in [the closest prior art]". However, the Board of Appeal upheld the decision of the Examining division and the appeal was dismissed.

Some key takeaways from the decision are:

 

1. Focus on measurements that involve "interactions with reality"

The Board of Appeal found that providing an overall "measure" of the glucose variability and a prediction of glycaemic events does not amount to a technical effect. In the decision, they noted that the term "measurement" may be used to give claims a veneer of technicality. However, they state that the meaning of measurement is an interaction with physical reality for the calculation of a physical state of an object, either directly or indirectly.

 

The physical reality in this case is the patient’s blood, and that interaction ends once blood glucose measurements are carried out. The subsequent processing steps take place in the absence of this interaction with physical reality, and are therefore “inherently non-technical”.

 

2. The EPO's Guidelines for Examination are only a guide

Section G-II, 3.3 of the Guidelines for Examination lists as an example of technical contributions of a mathematical method: "providing a medical diagnosis by an automated system processing physiological measurements".

 

In the decision, the Board of Appeal stated that this example is “clearly erroneous”, since providing a medical diagnostics (whether by a physician or an automated system) is devoid of any technical character.

 

It is worth remembering that the Guidelines explicitly state that they should be "regarded as general instructions that may need to be adapted to the individual case" and "do not constitute legal provisions". In some circumstances, it is possible for the Guidelines to be out of sync with Board of Appeal decisions. Caution is therefore is advised when relying on the Guidelines, as updates to the Guidelines can lag behind Board of Appeal decisions and even contradict them.

 

3. Watch this space - diverging Board of Appeal decisions leave ambiguity

As well as contradicting the Guidelines for Examination, this decision also contradicts a previous Board of Appeal decision T 2681/16 which found that found that processing of glucose data points to derive a measure of blood glucose variability could contribute to a technical effect. The scope of what is considered technical is different depending on whether your rely on T 1741/22  or T 2681/16.

 

A referral to the Enlarged Board of Appeal may be the only way to establish to what degree subsequent processing of medical data can be considered to have technical character. Until then, wherever possible, it is best to ensure that a patent application includes a step of taking a measurement (i.e., interacting with a physical reality), not just processing measurements.

 

The full decision can be read here: T 1741/22 (New medical data/ROCHE) 26-07-2024 | epo.org

 

If you would like more information on this topic, please reach out to Sinead, or one of the Keltie team.