On July 15, 2020, case G 1/19 on the patentability of computer-implemented simulations had been heard by the Enlarged Board of Appeal of the European Patent Office (EPO). A few months later, on March 10, 2021, the EPO published the eagerly awaited decision.
The earlier interlocutory decision T 489/14 dealt with, among other things, the question of whether the examining division originally responsible had rightly rejected the European patent application concerned (“Simulation of the movement of an autonomous entity through an environment”) due to a supposed lack of inventive step. The Board in case T 489/14 had submitted the following questions to the Enlarged Board of Appeal:
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 central question of G 1/19 was therefore: Can a simulation claimed as such solve a technical problem? And if so, according to which criteria should this be assessed?
Patentability not denied in principle
With regard to question 1, the Enlarged Board of Appeal stated on the one hand that computer-implemented simulations as a subset of computer-implemented inventions (hereinafter “CIIs”) cannot be a priori excluded from patent protection and that, for this reason alone, question 1 is to be answered in the affirmative. The Board stated that as a result, on the other hand, the presence of an inventive step is to be assessed following the – for CIIs well-established – COMVIK approach also for simulations. Said approach specifies in particular the application of the well-known problem-solution approach to mixed-type inventions having technical and non-technical features (see EPO “Guidelines for Examination”, G-VII, 5.4).
When does a simulation solve a technical problem?
While the Enlarged Board of Appeal considered the first part of question 2 too broad – on the grounds that it is never possible to give an exhaustive list of relevant criteria – and therefore inadmissible, it nevertheless addressed some criteria discussed in previous decisions. While, in the opinion of the Enlarged Board of Appeal, a “direct link with physical reality” is in most cases sufficient to affirm the presence of a technical solution to a technical problem, such a direct link cannot be necessary for this purpose. The Board also stated that a criterion based on a (physical) “tangible effect” does not contribute to a more precise delimitation of patentable inventions.
The Enlarged Board of Appeal answered the question of whether it is a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process (second part of question 2) in the negative. In particular – for the assessment of inventive step – the skilled person in the technical field of the simulated system or process is often less relevant than the skilled person for the simulation itself. Moreover, an affirmative answer would give simulations a privileged position over CIIs in general – without there being any legal basis for this. Basing the simulation on technical principles of the simulated system or process, on the other hand, is not a necessary condition for solving a technical problem either.
Furthermore, the Enlarged Board of Appeal saw no need for the application of special rules to simulations claimed as part of a design process (question 3), meaning that the answers to the first two questions are unchanged in these cases.
The answers of the Enlarged Board of Appeal can thus be summarised under the heading: No special rules for computer simulations – with the addition that no special rules are to be applied to design processes including computer simulations either. Particularly noteworthy is the Enlarged Board of Appeal’s reference to the applicability of the COMVIK approach also to simulations, as well as the rejection of further, possibly stricter, criteria specifically for simulations. The patentability of computer-implemented simulations thus remains a question to be carefully considered and decided on a case-by-case basis.
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