The Enlarged Board of Appeal of the European Patent Office (EPO) issued its G1/19 decision on 10 March 2021. This decision was eagerly awaited, since the answers given by the Enlarged Board of Appeal will be key in assessing the patentability of inventions pertaining to methods of simulation or design. This decision was especially long and detailed. In addition to answers to the questions posed explicitly, the explanations given by the Enlarged Board of Appeal included many findings, some being applicable not only to simulations but also to computer-implemented inventions in general.
In this article, we will examine the findings of the G1/19 decision with regard to:
- The background to the referral to the Enlarged Board of Appeal;
- The questions referred to the Enlarged Board of Appeal;
- The Board's answers;
- The findings that can be drawn from the decision, in addition to the answers themselves.
The treatment of mixed inventions at the EPO
In the practice of the European Patent Office, a "mixed" invention is an invention that comprises both technical and non-technical features. This is especially the case for many computer-implemented inventions, and inventions dealing with simulations.
The "COMVIK" approach is used to assess the inventive step of such inventions. In this approach, only the distinctive features providing a technical contribution are taken into account in establishing the inventive character of a claim. Consequently, determining the technical character of a claim's features is now of fundamental importance in the inventive step assessment of computer-implemented inventions.
The "Infineon" approach
Prior to referral to the Enlarged Board of Appeal, inventions pertaining to methods of simulation or design were generally examined according to the principles set out in the Infineon - T 1227/05 decision, issued by the Technical Board 3.5.01.
The invention concerned the simulation of a circuit subject to 1/f noise, in particular through the determination of a value for random numbers.
In this decision, the Board of Appeal considered that the simulation of a circuit subject to 1/f noise constituted an adequately defined purpose and that, in this respect, the generation of random numbers had a technical character when it was functionally limited to that purpose.
The clarifications in this decision were summarised as follows in the EPO's guidelines for examination:
"The computer-implemented simulation of the behaviour of an adequately defined class of technical items, or specific technical processes, under technically relevant conditions qualifies as a technical purpose (T 1227/05). Examples are the numerical simulation of the performance of an electronic circuit subject to 1/f noise or of a specific industrial chemical process.
Such computer-implemented simulation methods cannot be denied a technical effect merely on the ground that they precede actual production and/or do not comprise a step of manufacturing the physical end product."
Therefore, the approach generally adopted by the examiners on this basis would consist of considering the features of an invention pertaining to a simulation to be technical provided the claimed subject-matter was limited to the simulation of an adequately defined technical purpose.
The "Pedestrian Simulation/Connor" decision calls this approach into question
In the Pedestrian Simulation/Connor - T489/14 case, the Technical Board 3.5.07 adopted a different approach from the Infineon approach.
In this case, the invention concerned a simulation pertaining to the design of a space such as a railway station or a stadium. Claim 1 of the main application concerned a method of modelling pedestrian crowd movement in an environment.
The method simulated movement of a plurality of pedestrians through an environment. For each pedestrian, a "personal space" was determined based on a profile specific to that pedestrian, a provisional path through a model of the environment, and certain functions expressing a "dissatisfaction, "inconvenience" or "frustration" cost. The method then determined whether the step was feasible, taking into account obstructions in the vicinity of the pedestrian and in the pedestrian's personal space.
The Board of Appeal 3.5.07 considered this situation to be similar to that of the "Infineon" decision, since both cases concerned the simulation of a physical system – circuit subjected to a 1/f noise in the Infineon decision, building subjected to pedestrian movement in the Connor decision.
However, it considered that the invention that is the subject of the Connor decision concerned an act that is essentially mental and non-technical, since the computer merely helps a user in the mental process of designing a building and, while the computer speeds up the design process, the effect obtained does not go beyond the computer implementation itself.
The Board therefore concluded that its reasoning led to the technical character of the claim not being recognised whereas, in a similar case, using the Infineon approach would have resulted in it being recognised.
The Board of Appeal 3.5.07 therefore considered that there was a divergence from the Infineon decision, and referred the matter to the Enlarged Board of Appeal.
The questions referred to the Enlarged Board of Appeal
In this respect, the Board of Appeal 3.5.07 asked the Enlarged Board of Appeal the following questions:
- 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?
- 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?
- 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 from the Enlarged Board of Appeal
The Enlarged Board of Appeal separated question 2 into a question 2A and a question 2B:
2. [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?
Question 2B was re-worded as follows:
2B. For the assessment of whether a computer-implemented simulation claimed as such solves a technical problem, 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 of Appeal found question 2A inadmissible, considering that it would not be possible to give an exhaustive list of criteria, and that it went beyond the clarifications required by the decision (points 67 to 69 of the decision). It therefore only answered questions 1, 2B and 3, 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, solve a technical problem by producing a technical effect going beyond the simulation's implementation on a computer.
2B. 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 findings that can be drawn from the decision
As well as answers to the questions, the Enlarged Board of Appeal provided a comprehensive argument from which a number of findings can be drawn. The most significant of these are reviewed below.
Selection of the COMVIK approach as general approach for the inventive step assessment of computer-implemented simulations at the EPO
In the Enlarged Board of Appeal's opinion, since the computer-implemented simulations were computer-implemented methods, the criteria developed in the COMVIK approach should be applied to the inventive step assessment of computer-implemented simulations (points 114, 136). Similarly, the assessment of each feature's contribution to the technical character of the invention should be no different for simulations than for other computer-implemented methods (point 117).
Still no explicit, exhaustive definition of what constitutes a technical feature…
The Enlarged Board noted that the EPC gave no explicit definition of what constituted a technical feature (points 75 and 76), and considered that it was necessary to leave the definition of a technical feature open, so that this definition could be extended in the course of time and accommodate new scientific developments or reflect societal changes (point 77).
… nor the conditions for a simulation to be technical
The Enlarged Board of Appeal also considered question 2A inadmissible, since in its opinion it is never possible to give an exhaustive list of criteria for assessing whether a computer-implemented method solves a technical problem (point 67).
The technical character of the simulated system is not a criterion
According to the Enlarged Board of Appeal, the fact that the simulated system is technical or not is not a criterion for assessing the technical character of the simulation. What is decisive, in the COMVIK approach, is that the simulation itself solves a technical problem (point 120, 140, 141). In this context, the technical character of the simulation is therefore not defined by what is simulated, but rather by how the simulation is performed.
Production of a further technical effect through the simulation's implementation as a criterion for validating the technical character
In its answer to question 1, the Enlarged Board of Appeal indicated that a computer-implemented simulation can solve a technical problem by producing a technical effect going beyond the simulation's implementation on a computer.
The Enlarged Board defined the notion of "further technical effect" in points 50 and 51, based on decision T1173/97, and in the context of simulation inventions, as "a technical effect going beyond the straightforward or unspecified implementation on a standard computer system".
In points 85 and 86 the Enlarged Board of Appeal noted that further technical effects could be obtained, in a non-exhaustive way:
- On input to the simulation, e.g. through sensor measurements on input;
- On output from the simulation, e.g. through control signals for controlling a device;
- By adaptation of the computer or its operations, e.g. better use of storage capacity or bandwidth.
The inputs and outputs can, in this case, correspond to direct links with physical reality.
The Enlarged Board also noted that the technical effect had to be obtained over the entire claimed subject-matter, or, if not, the claimed subject-matter had to be limited accordingly, such as steps establishing an interaction with physical reality (points 83 and 84).
In the Enlarged Board's view, however, only those technical effects that are at least implied in the claims could be considered. In particular, if a technical effect is linked to a future use of the results of the simulation, this use must be, at least implicitly, specified by the claim (point 124).
Guidelines for applying the COMVIK approach to simulations
In the Enlarged Board of Appeal's opinion, in the context of applying the COMVIK approach to simulations, the models (of simulated systems) underlying a simulation form constraints which are not technical for the purposes of the simulation itself. However, they may contribute to the technical character of the simulation if they are a reason for adapting the computer or the way in which the computer operates, or if they contribute to technical effects relating to the results of the simulation (points 110, 137).
Whether a simulation contributes to the technical character of the claimed subject-matter does not depend on the quality of the underlying model or the degree to which the simulation represents "reality". However, the accuracy of a simulation is a factor that may have an influence on a technical effect going beyond the simulation's implementation and could therefore be taken into consideration in the assessment (point 111).
The Enlarged Board's refusal to take into account a divergence between the different decisions issued previously
In points 127 and 128 of the decision, the Enlarged Board of Appeal discussed the Infineon decision. It refused to re-assess the Infineon decision, or to decide whether the conclusions expressed by the Board 3.5.07 in the Connor case might diverge from the Infineon decision. It noted that the Infineon decision had been taken in specific circumstances, emphasising the specific and limited purpose of the output of the simulation.
Therefore, the Infineon criterion - that a simulation constitutes an adequately defined technical purpose for a simulation method if it is functionally limited to that purpose - should not be taken as a generally applicable criterion (point 133).
No distinction between a simulation process and a design process
The Enlarged Board of Appeal considered that the design methods must be treated in the same way as the simulations since, while the design activity per se is a cognitive activity, a design process cannot be excluded from patentability if it includes simulation steps having a technical character (points 138, 143, 144).
While it did not develop specific criteria for the design methods, the Enlarged Board of Appeal indicated in point 134 that a manufacturing step would "of course" be an argument in favour of patentability in the context of the COMVIK approach. Although it identified no decision including simulations in the context of design processes, it did cite two decisions pertaining to design processes:
- a first decision, T453/91, in which a manufacturing method was found to be patentable, and which comprised a design step followed by a manufacturing step;
- a second decision, T471/05, in which a design process, including no claim for a manufacturing step, was found to be patentable. However, the Enlarged Board of Appeal indicated that this decision was of limited relevance since it made no reference to the technical nature of the design steps or to the COMVIK approach.
Therefore, the Enlarged Board of Appeal seems here to indicate that, in the context of a design method, the inclusion of a manufacturing step would be an advantageous route in justifying a further technical effect, in accordance here with the older decision, T453/91.
However, the Enlarged Board of Appeal did not consider the inclusion of a manufacturing step to be essential. Consequently, the realisation of a technical effect by other means, e.g. by adaptations to the computer system or its operations to achieve a further technical effect when the method is executed on the computer, remains a possibility.
The G1/19 decision should provide a reference framework for the European Patent Office's examination of patent applications pertaining to computer-implemented simulations.
The COMVIK approach has indeed been accepted as general approach to be applied for this type of invention. By extension, the COMVIK approach has been confirmed as the reference approach adopted by the EPO for mixed inventions. In the light of the G1/19 decision, it appears extremely unlikely that the EPO's use of the COMVIK approach for mixed inventions will be called into question in the future.
Conversely, the Infineon approach, which was presented in the EPO's guidelines as a generally applicable approach for patent applications pertaining to simulations, could only be applicable in specific and limited cases.
In the G1/19 decision the Enlarged Board of Appeal has defined the general principles and provided guidelines for the assessment of patent applications pertaining to computer-implemented simulations, and more generally to computer-implemented inventions. It will be especially interesting to see how these principles will be applied in the subsequent decisions by the Boards of Appeal of the European Patent Office.
The impact of this decision on the present and future patent applications at the EPO must be analysed with the utmost consideration.