G1/19: Computer-implemented simulations can be inventive

A decision has been announced by the Enlarged Board on the referral G1/19.

The Enlarged Board of Appeal of the European Patent Office (EPO) has announced that it has made a decision on the referral G1/19, relating to how inventions relating to computer-implemented simulations should be dealt with under the European Patent Convention (EPC). This article looks at the decision made, the Enlarged Board’s reasoning for this decision and what this means for applicants pursuing protection for computer-implemented simulations before the EPO.

Background

The G1/19 referral was made by a Technical Board of Appeal, from an appeal which stemmed from a European patent application relating to a simulation of the movement of pedestrians in certain environments. The examining division took the view that the features of the simulation were non-technical, and only the use of a computer to implement the simulation could be seen as a technical feature. The application was then refused on the basis that it would be obvious to use a computer to implement such a simulation.

This decision was appealed, and the responsible Technical Board of Appeal subsequently referred the below three questions to the enlarged board:

  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?

The Decision

Here we take a look at the Enlarged Board’s answers to the above questions, and what this means for future applications.

  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?

In their decision, the Enlarged Board stated that a computer-implemented invention could not be excluded from protection a priori, and as such the answer to this question must be ‘yes’. This is consistent with prior case law and the longstanding ‘COMVIK approach’ for dealing with issues of whether claimed features are technical or non-technical. The full answer of the Enlarged board was:

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.”

The Enlarged Board split the second question into two separate questions, as follows:

2a. 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?

2b. 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?

The Enlarged Board decided question 2b should be answered with a ‘no’, in that for the assessment of inventive step, “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”.

The Enlarged Board reasoned that if there was a condition that the simulation is based on technical principles, then applications relating to such simulations would be privileged over simulations not relating to technical principles. As there is no legal basis in the EPC or its Implementing Regulations for such a privilege, the question must be answered that there is not this condition.

Question 2a is thus rendered moot by the answer of 2b, and the Enlarged board thus declined to provide an answer on this question. The Enlarged Board, unsurprisingly, did not want to provide lists of said ‘relevant criteria’, given the Board’s function to decide on Points of Law, as opposed to making ‘new law’.

  1. 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 view of the undefined term ‘design’, and the possibilities that issues could emerge if a separate set of rules were created for design processes, the Enlarged Board decided that:

The answers to the first and second question are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.”

You can read the Enlarged Board of Appeal’s full decision here.

Conclusion

This decision is largely as expected, in that the Enlarged Board have chosen not to establish any new rules or limitations on computer-implemented simulations, and have simply decided that the existing rules for computer-implemented inventions apply analogously to computer-implemented simulations.

In choosing not to erect new barriers to patentability for inventions relating to computer-implemented simulations, the Enlarged Board have provided a boost to any applicants whose application relates to said simulations.

This is effectively an ‘as you were’ decision, as the Enlarged Board have decided that the current Guidelines for Examination and the use of the COMVIK approach for computer-implemented inventions remain in line with the EPC and its Implementing Regulations, even when applied to these simulations.

If you have any questions about this decision or would like general advice on practice before the EPO, please get in touch to speak to one of our attorneys.