31/03/2021
As reported previously, the EPO’s Enlarged Board of Appeal has issued their decision in G1/19 regarding the patentability of computer simulations. We’ve now had the chance to review it in more detail. The key points to take from the decision are:
- The Enlarged Board has not ruled out patenting computer-implemented simulations in Europe
- But it remains difficult
- The Enlarged Board refused to give specific criteria for assessing whether a computer-implemented simulation is patentable
- But the Enlarged Board did point to some criteria that are not determinative
- And the Enlarged Board did point to some earlier simulation cases that they agreed could be patentable
In other words, G1/19 does not close the door on patenting computer-implemented simulations but neither does it open it wide.
Background
Inventions that fall into certain categories of excluded subject-matter, including programmes for computers, mathematical methods and mental acts, are not patentable in Europe. The EPO’s established ‘COMVIK’ approach assesses inventive step for claims that include a mixture of features that do and do not fall into categories of excluded subject-matter. If a claim feature relates to excluded subject-matter and does not contribute to a technical solution to a technical problem then it is ignored for the assessment of inventive step.
The referral to the Enlarged Board in G1/19 arose from an appeal (discussed previously) considering the patentability of a computer-implemented method of simulating pedestrian movements within a virtual environment. The method takes computer data as input and provides computer data as output. It does not specify constructing a virtual environment in physical reality based on the simulation.
It was accepted that the mathematical operations underlying the simulation constitute excluded subject-matter. The important question is whether these operations should be counted for the assessment of inventive step, i.e. whether they contribute to a technical solution to a technical problem.
In some previous decisions of the EPO’s Boards of Appeal, claims for simulations or design processes had to show a direct link with physical reality, e.g. a step of manufacturing an article based on the simulation or design process, for the simulation or design process steps to contribute to a technical solution to a technical problem. But in some more recent decisions, it has been accepted that a computer-implemented simulation is ‘technical’ in itself, i.e. that it produces a technical effect beyond its implementation on a computer, because the simulation is performed by an engineer to solve a technical problem.
Questions on whether simulation features can be counted for the assessment of inventive step were referred to the EPO’s Enlarged Board of Appeal.
Referred questions and the Enlarged Board’s answers
| Referred questions | Enlarged Board’s answers |
| 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? | 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 |
| 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? | The Enlarged Board refused to answer this question, explaining that it was not possible to provide an exhaustive list, and an answer to this is not needed by the referring Board to decide its case |
| 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? | 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. (It is also not a necessary condition) |
| 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 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 |
By themselves, these answers are not especially helpful for other applicants seeking to patent computer-implemented simulations in Europe. They state that computer-implemented simulations can be patented, but they don’t explain how to decide whether a computer-implemented simulation is patentable or not.
But Enlarged Board’s reasoning that led to these answers may still be helpful and we discuss some parts of the decision in more detail below.
Direct link to physical reality not required
The Enlarged Board accepted that a claimed simulation with a direct link to physical reality, such as a step of manufacturing or controlling something based on the results of the simulation, is usually sufficient to establish ‘technicality’ for the simulation steps.
But the Enlarged Board also stated that a direct link to physical reality is not a necessary condition and so computer-implemented simulations that do not include such a step remain patentable in theory.
Potential and implied technical effects
The Enlarged Board acknowledged that a potential technical effect may be considered if the data resulting from a simulation is specifically adapted for the purposes of its intended technical use.
In such cases, the technical effect that would result from the intended use of the output data might be considered “implied” by the claim. But if the output data has genuine non-technical uses then the technical effect is not achieved over the whole scope of the claim.
Therefore only those technical effects that are at least implied in the claims can be considered in the assessment of inventive step.
Enlarged Board’s review of previous decisions
The Enlarged Board referred to two previous decisions in which a computer-implemented simulation was considered to have technicality even without a direct link to physical reality, T1227/05 and T625/11.
In T1227/05, the claims were directed to a computer-implemented method for the numerical simulation of a circuit, which resulted in an output vector calculated according to differential equations for an input vector and for a noise vector of 1/f-distributed random numbers.
In T625/11, the claims were directed to method for establishing by a computer system at least one limit value for at least one operational parameter of a nuclear reactor, which method included a simulation step and resulted in numerical values for one or more limit values for e.g. global power of the reactor.
The Enlarged Board agreed with the findings of T1227/05 and T625/11 “if they are understood as being that the claimed simulation processes in those particular cases possessed an intrinsically technical function“.
Can applicants apply the Enlarged Board’s decision in their favour?
Since the Enlarged Board has accepted that simulations claimed in T1227/05 and T625/11 possess an intrinsically technical function, it is worth looking at these claims in more detail to see how this intrinsically technical function is recognised.
In T1227/05, the output data is an ‘output vector’ that describes the circuit behaviour. There does not seem to be any implicit limitation to its intended use from the term ‘output vector’. Instead, the accepted implicit limitation seems to arise from the simulation of 1/f noise in a circuit being something that is only done for technical purposes. The intended use of the output data appears to be implied by this factor.
In T625/11, the output data is an ‘operational parameter’ for a nuclear reactor. This is essentially a control signal that is potentially used to control a nuclear reactor. The implicit limitation to a technical purpose seems more clear in this case than in T1227/05.
The common feature to each seems to be that the simulation is implicitly for a technical purpose. But in T625/11 the implicit limitation is more apparent since the output data is described as an ‘operational parameter’ rather than an ‘output vector’. While both of these are just numerical values in practice, the label ‘operational parameter’ implies its use in operating the nuclear reactor.
Therefore, following G1/19, EPO examiners might be receptive to arguments that a claimed simulation process is implicitly for a technical purpose. But such arguments might be more persuasive if the intended further use of the simulation output data was more clearly signposted in the claim, such as by using terminology to reflect the intended further use as in T625/11.
Conclusion
While a direct link to physical reality is not required to patent a computer-implemented simulation in Europe, it is still worth including such a feature as a fall-back position when drafting patent applications.
An implied limitation on the use of the simulation’s output data might be sufficient, but we don’t know yet how EPO examiners and Boards of Appeal will interpret this requirement. We only have a small number of cases in which an implied limitation on the use of output data is acknowledged and it is difficult to generalise these cases into new drafting practices. Although this will become clearer as the EPO applies G1/19 in the future.
Finally, the Enlarged Board’s implied-limitation approach may be applicable to other computer-implemented inventions beyond simulations. For example, artificial intelligence inventions face the same excluded-subject-matter issues as simulations. If a claimed AI invention does not have a direct link to physical reality, applicants may be able to argue for technical effect based on an implied limitation on the use its output data.
If you have questions on patenting computer-implemented simulations in Europe, or on the impact of this decision on patenting other computer-implemented inventions such as AI inventions, please contact the author below or your regular Reddie & Grose contact for further details.
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.
