EPO Board of Appeal Clarifies Patent Scope for AI-Driven Engineering Design in T 0847/24

The European Patent Office (EPO) Board of Appeal’s recent decision in case T 0847/24 provides important guidance for patent applicants in the emerging field of AI-assisted engineering design. The ruling clarifies that when an invention involves AI-generated digital models leading to a physical product, patent claims must explicitly cover the entire process from digital data generation to the manufacturing of the physical item if protection for both is sought.

The case arose from patent EP2931143, which originally claimed a computer-implemented method for generating configuration data for a customized implant based on patient-specific or design parameters. The granted claim was limited to the computational step of producing data representing the implant configuration, without covering the implant’s manufacture.

During opposition proceedings, the patentee, Materialise NV, attempted to amend the claim by adding an explicit manufacturing step—producing the implant according to the generated configuration data. While this appeared to narrow the claim and potentially strengthen inventive step arguments, the Board of Appeal found the amendment impermissible under Article 123(3) EPC.

The Board’s reasoning centered on Article 64(2) EPC, which states that protection conferred by a process claim extends to products directly obtained by that process. The Board interpreted “directly” to exclude products that require further unclaimed steps to be realized. In this case, the claimed process produced only data, and additional manufacturing steps—absent from the claim—were necessary to create the physical implant.

Consequently, the Board concluded that the physical implant was not a “product directly obtained” by the claimed process. Adding the manufacturing step post-grant thus extended the patent’s protection beyond what was originally conferred, violating Article 123(3) EPC.

This decision has broad implications beyond Medtech, particularly for AI-assisted engineering design fields such as data center layout optimization, automotive and aerospace component geometry generation, CAD/CAM file production for 3D printing, and industrial equipment configuration. In all these areas, innovative algorithms generate digital product representations that are subsequently manufactured.

T 0847/24 confirms that at the EPO, the digital modeling process and the manufacture of the physical product are distinct inventions. A granted claim covering only the data generation cannot be retroactively amended to include manufacturing steps.

For AI innovators, this ruling underscores the importance of drafting patent applications that claim both the method of generating the digital representation and the physical product or manufacturing process itself. Since the commercial value and infringement risk often lie with the physical product’s manufacture or deployment, failing to claim these aspects at the outset creates a protection gap that cannot be remedied later.

Patent applicants should carefully consider their enforcement targets when filing. If the goal is to prevent unauthorized manufacture or use of a physical product, claims limited solely to design or configuration data generation may prove insufficient.

For existing patents, patentees should exercise caution when seeking to amend claims post-grant to add manufacturing steps. The Board’s decision in T 0847/24 signals a low likelihood of success for such “upgrade” amendments, particularly when the original claims are limited to software or data generation methods.

In summary, T 0847/24 provides a clear directive: the EPO will not allow patentees to bridge the gap between AI-generated digital designs and their physical embodiments through post-grant claim amendments. Comprehensive claim drafting at the filing stage is essential to secure robust protection for AI-assisted engineering inventions.

This article serves as a general guide and does not substitute for specialist legal advice tailored to specific circumstances.