The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) recently published its decision, G 1/19, on several matters of law regarding the patentability of computer-implemented simulations and the assessment of inventive step thereof. In short, the Enlarged Board has reaffirmed, and expanded upon, the precedent established by the 2002 Board of Appeal (BoA) decision T 0641/00, best known as ‘COMVIK’, which set out the so-called ‘Comvik approach’, a nuance of the EPO’s problem-solution approach that stipulates that non-technical elements of an invention cannot be considered when assessing the inventiveness of that invention.
The European patent application, EP03793825.5, which is the subject of the decision from the EBA concerns a method of the ‘Simulation of the movement of an autonomous entity [e.g., a pedestrian] through an environment’. As was proposed by the Applicant during prosecution, the simulation of the movement of individual persons, upon iteration, enabled better modelling of people moving through a building, for example a stadium, office space, airport, shopping mall, and the like, as opposed to conventional techniques that simulated a moving crowd as a single body rather than as an emergent property from the interactions of many pedestrians. This improved simulation accuracy would prove helpful, the Applicant argued, when verifying that a design of such a building satisfies certain regulations in respect of evacuation efficacy and so on. The Examining Division, however, took a different view; namely, that the independent claim was substantially composed of non-technical features and ‘only the use of a computer contributes to the technical character of the claimed method’ and therefore, in view of the contemporaneous examination practice, ‘only this feature is to be taken into account in examining inventive step of the claimed subject-matter.’ Inevitably, in view of this reasoning, the application was refused under Article 97(2) EPC in 2013 after Oral Proceedings on the grounds that it would have been obvious to the skilled person to use a computer to implement the non-technical simulation model.
In T 0489/14, the Applicant appealed the refusal, which in turn led to the BoA’s referral of the following questions to the EBA, the answers to which form the present decision, G 1/19:
Q1. 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?
Q2. (a) 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?
Q2. (b) 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
Q3. 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?
The first of these questions attracted some interesting discussion on the technicality of computer-implemented inventions. To start, there is the matter of patentability in view of Article 52 EPC, which includes the exclusion ‘…schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers’. Critically, however, this prohibition is tempered by the following paragraph of the Article, that states the exclusion shall only apply ‘…to the extent to which a European patent application… relates to such subject-matter or activities as such’. (Emphasis added.) As the claimed invention does stipulate the use of a computer, the subject-matter is therefore not excluded. On the matter of inventive step, the EBA continued ‘If, for the inventive step analysis [in accordance with the problem-solution approach], only those differences from the prior art are to be considered which contribute to solving a technical problem, then [the requirements set by Article 52 EPC serve] as a filter through which the features distinguishing an invention from the prior art must first pass’, and stated further to COMVIK, ‘a feature is only considered for inventive step if and to the extent that it contributes to the technical character of the claimed subject-matter… [this] requirement is not met if that claimed feature in question contributed to the technical character only for certain specific embodiments of the claimed invention.’ (Emphasis added.) Specifically on the subject simulations, the EBA took the view that ‘first and foremost, [calculated information concerning a physical object] are mere data… which may be used, for example to gain scientific knowledge about a technical or natural system, to take informed decisions on protective measures or even to achieve a technical effect.’
In response to the referred questions, the EBA gave the following answers:
A1. A computer-implemented simulation of a technical system or a 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.
A2. 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.
A3. The [preceding answers] are no different if the [simulation] is claimed as part of a design process…
The upshot of the EBA’s decision is mixed. Applicants might be relieved to find that the EPO has not undertaken some significant reversal on whether computer-implemented simulations are patentable: they still can be. But, to reaffirm COMVIK, Applicants should take extra care that the technical features of their claimed subject-matter in and of themselves describe a lucid and direct technical effect.
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