Data to Physical Object: T 0847/24 on Article 123(3) EPC and Manufacturing Steps
Can you save a data-generating method claim by adding a manufacturing step in opposition? In T 0847/24, the board held that such an amendment violates Article 123(3) EPC by extending product protection under Article 64(2) EPC.
Picture prosecuting a method claim for medical planning software that outputs a three-dimensional model of a patient-specific implant. When an opposition division later objects that the abstract data output lacks technical character, the natural instinct is to amend the claim to include the final step of actually manufacturing the physical implant.
The non-technical nature of abstract data
In T 0847/24, the patent proprietor faced exactly this scenario. The patent, EP 13818995.6, concerned a computer-implemented method for configuring a surgical guide and an implant for maxillofacial osteosynthesis. The method involved simulating an osteotomy on a virtual model and determining a monolithic three-dimensional structure for the implant that couples the attachment points in the modified three-dimensional model.
The opponent cited prior art disclosing the manual bending of pre-existing titanium plates on a physical resin model. The panel found the claimed sequence novel, as the prior art did not disclose determining a three-dimensional structure for the implant in the modified three-dimensional model based on previously defined attachment points.
However, the panel concluded this distinguishing feature lacked technical character. Applying the Comvik approach and G 1/19, the board noted that the method merely produced abstract data defining a three-dimensional structure. Because the claim did not include a manufacturing step, the physical object remained purely hypothetical. Furthermore, the claim did not specify any implicit technical use for the data, such as formatting it for a specific manufacturing apparatus. Consequently, the feature could not support an inventive step.
The manufacturing amendment trap
To overcome this, the proprietor filed an auxiliary request adding a final step of producing the surgical guide and the implant. While this successfully anchored the method in physical reality, it triggered a fatal objection under Article 123(3) EPC.
The proprietor argued that adding a production step merely limited the granted method, which used the open-ended term "comprising". Since the amended method was narrower, they reasoned, the scope of protection could not be extended.
The board disagreed, drawing a sharp distinction based on Article 64(2) EPC. This provision extends the protection conferred by a process patent to the products directly obtained by such process. For the granted claim, the direct product was merely data defining the configured implant. A physical implant is far removed from mere data and was therefore not directly obtained by the granted method.
By adding the manufacturing step, the amended claim suddenly conferred product protection on the physical implant itself. The panel held that if a granted claim defines a computer-implemented method for configuring a physical object which, when carried out, merely results in data representing that physical object, and not in the object itself, amending the claim such that it additionally includes the step of manufacturing the physical object so configured is, in view of Article 64(2) EPC, not allowable under Article 123(3) EPC (reasons 6.7).
Practical implications
This decision exposes a critical vulnerability in software and simulation patents. If you grant a method claim that stops at the generation of data, you cannot later cure a lack of technical character in opposition by appending a manufacturing step. The interaction between Article 123(3) EPC and Article 64(2) EPC means that narrowing the method steps can impermissibly expand the product protection.
To avoid this trap, applicants must ensure that the original application includes fallback claims that explicitly recite the manufacturing step. Alternatively, if the claim must stop at data generation, the data itself must be defined as being specifically adapted for a technical use, such as being formatted for a specific manufacturing apparatus. Relying on the implicit assumption that a configured implant will eventually be manufactured is insufficient to establish technical character and impossible to fix post-grant without violating the European Patent Convention.
Sources
Further Reading
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