G1/19 v. 10.03.2021

Decision G1/19 of the Enlarged Board of Appeal on the patenting of computer-implemented simulations and designs

G1/19 v. 10.03.2021

The Enlarged Board of Appeal of the European Patent Office (EPO) has ruled that the established case law on computer-implemented inventions also applies to computer-implemented numerical simulations and designs of a system or process. In doing so, it clearly opposes the Board’s approach in the referral decision T 0489/14, according to which a technical effect achieved by a simulation requires at least a direct link to physical reality. The Enlarged Board of Appeal clarifies in its decision that it will maintain its established approach to the assessment of inventive step, known as the COMVIK approach.

Background

In the referral decision T 0489/14, the invention (European patent application No. 03793825.5) describes the modelling and simulation of movements of a single pedestrian within an environment, for example within a building. A plurality of these simulated movements of a pedestrian can then be part of a simulation of a movement of a group of pedestrians, for example, to better assess evacuation scenarios.

In its decision, the board emphasized that a technical effect must at least require a direct link with physical reality, such as a change in or a measurement of a physical entity. The board could not see such a direct link in the claimed method of calculating the trajectory of hypothetical pedestrians moving through a modelled environment (para. 11). Furthermore, the board saw a certain analogy to a method of testing by simulation as in the decision T 1227/05 (Infineon) and considered that, applying the reasons for the decision set out there, some or all of the steps of the simulation method would contribute to a technical effect of the invention and therefore could not be ignored when assessing inventive step (para. 14 and 18 in the decision T 0489/14).

Since, contrary to the approach developed in T 1227/05, the board tended to consider the subject-matter according to claim 1 to lack inventive step over a general-purpose computer, it considered this to be a legal question concerning the interpretation of Articles 52(2) and (3) and 56 EPC and therefore of fundamental importance (para. 17 and 19).

The Technical Board of Appeal 3.5.07 submitted the following three questions to the GBK in accordance with Article 112(1)(a) EPC:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?
2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

In G1/19, the Enlarged Board of Appeal has now given final answers to all three questions. Question 2 was split into two sub-questions 2A and 2B, with the Enlarged Board of Appeal stating in its decision that it could not admit the first part of the second question (question 2A), as the existing COMVIK approach was already sufficient to provide an answer here.

The COMVIK approach was applied in the decision T 641/00 (OJ 2003, 352). It is a conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that contribute to the technical character are considered for inventive step. It is well established that non-technical elements do not contribute to inventive step (Case law of the Boards of Appeal, I.D.9.1.3 b)).

Regarding the decision 1227/05, the Enlarged Board of Appeal has taken the view that calculated numerical data reflecting the physical behaviour of a system modelled in a computer could not establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflected the behaviour of a real system underlying the simulation. Thus, the decision T 1227/05 decision represented only an exceptional case where such calculated effects could be considered as implied technical effects (para. 128).

With respect to question 1, the Enlarged Board of Appeal states that computer-implemented simulations are computer-implemented processes which usually comprise a mixture of technical and non-technical features and therefore the criteria developed in the COMVIK approach could be applied. Thus, like any other computer-implemented invention, simulations could be patentable if an inventive step can be based on features that can contribute to the technical character of the claimed simulation process. Thus, exclusion a priori from patent protection could not be ruled out for any group of computer-implemented inventions.

With respect to question 2B, the Enlarged Board of Appeal states that a simulation is necessarily based on the principles underlying the simulated system or process. Even if these principles could be described as technical, the simulation would not necessarily be technical in nature. If purely technical principles were sufficient for simulation, then computer-implemented simulations would hold a privileged position within the wider group of computer-implemented inventions without there being any legal basis for such a privilege (para. 141).

Question 2B was therefore answered in the negative by the Enlarged Board of Appeal, which means that even in the case of numerical simulations it has to be checked in each individual case whether the usual “technicality” criteria for computer-implemented inventions are met.

Furthermore, the Enlarged Board of Appeal states in its reasoning that if the fact that a simulated system is based on non-technical principles necessarily means that the simulation cannot have a technical character, this would lead to discrimination against particular groups of numerical simulations without there being any legal basis for such discrimination. In view of this, the Enlarged Board of Appeal has concluded that it is neither a sufficient nor a necessary condition that a numerical simulation be based, at least in part, on technical principles underlying the simulated system or process (para 142).

According to the understanding of the Enlarged Board of Appeal, question 3 refers to claims in which a design process is expressly mentioned, in particular a process for verifying a design. Also for this case, the questions are to be answered in the same way. In particular, the Enlarged Board of Appeal did not see any need here for the application of special rules if a simulation is claimed as part of a design process.

The headnotes to the questions of law referred to the Enlarged Board of Appeal are as follows:

1. A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer.
2. For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
3. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.

Conclusion

With its decision, the Enlarged Board of Appeal has confirmed the application of the principles of the COMVIK approach and thus supported the EPO’s established case law on computer-implemented inventions. It also did not follow the strict approach of the decision T 0489/14, but considers the criteria of inventive step for a claim to a computer-implemented simulation of a technical system or process to be fulfilled even if the claim does not describe features that directly interact with a physical entity.

Overall, it appears to be becoming increasingly important for applicants to disclose and claim simulation or design processes in the context of a particular and specific technical input or output, or a use of the results of the simulation or design process. However, since simulation and design processes often run on conventional computer hardware, it is now even more difficult for applicants to protect them independently of such a context.

Also, the accuracy of the simulation may be a factor that may have an influence on the technical effect beyond that of the implementation of the simulation and thus must be taken into account when assessing inventive step under Art. 56 EPC. To avoid objections under Art. 83 EPC, the applicant should carefully consider how much disclosure regarding a simulation and design method must be included in an application. A single specific implementation example may not be sufficient in the future to sufficiently support the patent claims within the meaning of Art. 83 EPC.

Dr.  Petra Westphal