The Enlarged Board has released its decision G 1/19 dealing withthe patenting of computer-implemented simulations and designs. The Enlarged Board concludes that computer-implemented numerical simulations and designs of a system or process should not be treated any different from any other computer-implemented invention, thereby rejecting “extreme positions”, such as in the referral decision T 0489/14.
In 2019, the Board of the EPO Boards of Appeal releasing the referral decision T 0489/14was inclined todisagree with the findings of the earlier – and to this date accepted – decision T 1227/05, which found that limiting a claimed invention to a computer-implemented simulation of an electronic circuit subject to 1/f noise qualifies asadequately defined technical purpose for a computer-implemented method functionally limited to that purpose, thereby conferring technical character to the simulation. In the referral decision T 0489/14, the Boardintended to demandstricter minimum requirements to acknowledge technical character of a simulation (or design process). In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity, which would clearly deviate from the findings in T 1227/05. Therefore, the Board put the following questions in front of the Enlarged Board of Appeal:
Question 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?
Question 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?
Question 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?
Decision of the Enlarged Board of Appeal
The Enlarged Board admitted question 1, interpreting it as asking whether, in the assessment of inventive step, the computer-implemented simulation of a technical system or process can solve a technical problem by producing a further technical effect that goes beyond the normal physical interaction between a program and a computer on which the simulation is run, if the computer-implemented simulation is claimed as such (G 1/19, see, e.g., Reasons 47 and 50). Only the second part of question 2 has been admitted, i.e. the Board answered the question whether it was a sufficient condition that the simulation is based, at least in part, on the scientific (e.g. mathematical and physical) principles applied within the boundaries set by the (natural or technical) system or process (“Question 2B” of G 1/19, see, e.g., Reasons 47 and 53). Question 3 was admitted as well and interpreted according to questions 1 and 2.
The answers to the admitted questions 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, serve 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.
The Enlarged Board concludes that computer-implemented numerical simulations and designs of a system or process should not be treated any different from any other computer-implemented invention, thereby rejecting the “extreme position” in the referral decision T 0489/14.While the Enlarged Board did not reject the findings in T 1227/05, the Enlarged Board indicated that the findings in T 1227/05 would not be generally applicable due to the specific character of the case underlying T 1227/05 and thereby took the lighthouse character of this decision away.
The Enlarged Board considers the “de-facto standard” at the EPO for the assessment of inventions having a mix of technical and “non-technical” features as defined in the headnotes of T 641/00 (COMVIK approach) to be suitable for the assessment of computer-implemented simulations. According to the COMVIK approach, the decisive question for the assessment of which features of a simulation of a system or process are technical features, and thus relevant for the assessment of inventive step, is whether the simulation or design process contributes to the solution of a technical problem by producing a technical effect.Therefore, the technical considerations relevant for the assessment of inventive step are only those technical considerations that pertain to the invention, i.e. to the simulation of the device or process, rather than the simulated system or process (G 1/19, Reasons point 125).
Referring to G 3/08, the Enlarged Board acknowledges that a simulation is necessarily based on the principles underlying the simulated system or process and that technical considerations associated with the system or process to be simulated typically form the basis of the mental act of establishing the model of the technical device or process being used in the simulation. The Enlarged Board holds that such mental act of establishing the model (and equations/algorithms) underlying the simulation is devoid of technical character, because the technical considerations being used inestablishing the model underlying the simulation do normally not translate into a technical effect being rendered by the execution of the simulation(G 1/19, see, e.g., Reasons106-112, 121, 137, 141).Were technical considerations associated with the system or process being simulated sufficient, for the purposes of question 2, for thesimulation to be of technical character, thencomputer-implemented simulations would hold a privilegedposition within the wider group of computer-implementedinventions without there being any legal basis for such aprivilege (G 1/19, Reasons point 141).
Along the same lines, the Enlarged Board also holds that a direct link with (external) physical reality, as demanded by T 0489/14, is not a requirement or necessary condition to acknowledge a technical character of the features claimed in context of a simulation or design process, even though such a link would likely be sufficient to establish technicality of those features in most cases (G 1/19, Reasons88, 139, 85). This is because a technical effect can also occur within the computer-implemented process itself. A simulation without an input or output having a direct link with physical reality can still solve a technical problem, for example by adaptation of the simulation software to the internal functioning of the computer system or network (e.g. to achieve better use of storage capacity or bandwidth, G 1/19, Reasons85, 115-116).Moreover, potential technical effects, i.e. effects achieved only in combination with non-claimed features,can be considered in the course of assessing the technical character of the claimed features. Those potential technical effects are to be distinguished from virtual or calculated effects, i.e.technical effects, which are not achieved through aninteraction with physical reality, but are calculated insuch a way as to correspond closely to “real” technicaleffects or physical entities, and direct technical effects on physical reality. Such potential technical effects may, for example, be attributed to data or data structures, which are especially adapted for the purposes of itsintended technical use. In such cases, either the technical effect that would result from the intended use of the data could be considered implied by the claim, or the intended use of the data could be considered to extend across substantially the whole scope of the claimed data processing method(G 1/19, Reasons89-97).
The Enlarged Board’s statement that computer-implemented simulations and design processes are not different from any other computer-implemented processes, and the reliance and strict application of the principles of the COMVIK approach, once again confirm and manifest the EPO’s established case law on computer-implemented inventions. While the good news for applicants is that the Enlarged Board did not follow the strict proposal by T 0489/14, the Enlarged Board confirmed the overall strict praxis of the assessment of computer-implemented inventions under the case law of the EPO Boards of Appeal also for computer implemented simulations and design processes.
As simulation and design processes are often developed to run on conventional computer hardware, it will become even more difficult for applicants to claim and protect the simulation or design process independent of a particular and specific technical input or output or (implied) use of the results of the simulation or design process, e.g. for controlling a machine or manufacturing a product. This also imposes that applications in this field have to be carefully drafted in consideration of whether the technical character of the invention is arguably based on a technical effect achieved by the simulation or design software when running on the computer. Furthermore, while the accuracy of the simulation or design process is usually not leading to an acknowledgment of the technical character of the simulation, it may neverthelessimpact the credibility of the simulation or design process in terms of inventive step (Art. 56 EPC) and/or sufficient disclosure of the invention (Art. 83 EPC).Thisrequires applicants to carefully consider the level of detail of the simulation and design method that needs to be disclosed in the application and also the number of alternatives that must be disclosed to support the invention over a broader scope than a single specific example implementation.