15/07/2020
We have just finished watching the oral proceedings before the EPO’s Enlarged Board of Appeal (EBA) on case G1/19 concerning the patentability of computer simulations. We were not alone – some 1,600 people signed up to watch today’s oral proceedings by live stream.
Unfortunately (but not unexpectedly) no decision was announced during the proceedings. However, we did get to hear some of the EBA’s thoughts on the issues.
As we previously reported, the EBA has been asked to decide three questions relating to the patentability of computer implemented simulations following interlocutory decision T 489/14, in which the Board in question disagreed with previous EPO case law on the topic:
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 other words, can computer simulations be patented?)
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?” (In other words, what criteria are to be used for deciding if a computer simulation is patentable?)
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 other words, does claiming the computer simulation as part of a design process change anything?).
The opening session was dedicated to the admissibility of the questions themselves. The EBA had some doubts, particularly relating to the breadth of the first part of the second question. It seems unlikely that the EBA will be drawn into setting out a test specifically for assessing patentability of simulation inventions. However, answers to the questions in some form does seem likely.
The appellant’s substantive arguments focussed on the earlier Board of Appeal case T 1227/05 (“Infineon”). This case, they argued, was the correct approach to assessing the technical nature of a simulation invention. In particular, according to the appellant, the technical purpose of the simulation should be considered because if there is a technical purpose there is necessarily a technical effect present.
The EBA teased preliminary views in respect of some of the questions. With regards to the second part of the second question their initial opinion was that it is not a sufficient condition that the simulation is based on technical principles underlying the simulated system or process. With regards to the third question their initial view was that the specifying the design process in the claim would not change anything, so the answers to the first and second questions would remain the same. If the EBA stick to these preliminary views then applicants for simulation based inventions will have to do more than just claim the underlying principles of the simulation, or its application to a design process, to obtain a European patent.
An honourable mention goes to the representatives of the President of the EPO, who also provided extensive argument in favour of the patentability of simulation inventions, and the approach adopted in the earlier Infineon case.
We will be following up on these issues when the decision is published.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
