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09.04.21

Update: Enlarged Board of Appeal releases decision on the patentability of inventions involving computer-implemented simulations at the EPO (G1/19)

This decision lays out the framework for assessing the patentability of computer-implemented simulation inventions.

The Enlarged Board of Appeal (EBA) has confirmed that the long-established COMVIK approach must be used for assessing computer-implemented simulations in the same way it is used for other computer-implemented inventions.

The EBA ruled that a claimed computer-implemented simulation may solve a technical problem by producing a technical effect even if the claim lacks an output having a direct link with physical reality.

Background

The invention in the appealed application involved a computer-implemented method used to simulate the movement of a crowd of pedestrians through an environment. The purpose of the simulation was to aid in designing a venue such as a railway station or a stadium. According to the applicant, this provides a more accurate and realistic simulation of pedestrian crowds in real-world situations, which could not be adequately modelled by conventional simulators.

However, when considering the patentable nature of modelling pedestrian movement in a building design process, the referring Board of Appeal disagreed with the conclusion of the earlier case T1227/05 related to simulation of circuits, and argued that contrary to T1227/05 “a technical effect requires, at a minimum, a direct link with physical reality”.

The referring Board further asserted that a method that merely simulates a technical system does not provide such a direct link with physical reality – it was argued that “although a computer-implemented simulation of a circuit or environment is a tool that can perform a function “typical of modern engineering work”, it assists the engineer only in the cognitive process of verifying the design of the circuit or environment… The circuit or environment, when realised, may be a technical object, but the cognitive process of verifying its design appears to be fundamentally non-technical”.

The Questions

In view of this conflict, the Board referred three questions to the Enlarged Board of Appeal to seek legal certainty on the state of computer-implemented simulation methods at the EPO. The questions were:

(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 Answers

The EBA has answered the admitted questions 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.

(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.

In summary, a claim to a computer-implemented simulation invention will be patentable if it involves an inventive step and can be directly linked to an effect which is deemed technical, even if the claim lacks an output having a direct link with physical reality. However, the technical aspects of implementing the simulation itself will not be considered to be a relevant technical effect.

The EBA has confirmed that the existing COMVIK approach is the test to apply. The implication of this decision for practitioners is that, since a simulation can solve a technical problem by producing a technical effect, it will allow us to continue drafting simulation claims without the limitation of having to recite a physical measurement or a subsequent system/process control step. The EBA suggested that one way to make simulations sufficiently technical would be to show an increased accuracy in representing reality. Thus, when drafting applications related to simulations, practitioners will need to be particularly vigilant on the formulation of the technical problem solved by the invention, and on the clear presentation of the technical effect.

The breadth of application of the COMVIK approach in the sub-category of simulations suggests that the same approach should apply to other kinds of computer-implemented inventions for which some might look for a special rule – AI-related inventions, for example. Thus, this indicates that the EPO seems to be broadening, generally, the scope of what is technical and thus protectable by patents.

https://www.epo.org/law-practice/case-law-appeals/communications/2021/20210310.html

 

If you have any questions on this topic, please contact Andy Cloughley at andycloughley@mskpatents.com.

Article written by Romi Korotana.

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