Further to our article in July 2020 on the EPO Enlarged Board of Appeal's hearing in G1/19, the Enlarged Board has now published its long-awaited decision relating to the patentability of computer-implemented simulations. While the decision specifically relates to computer-implemented simulations, it is likely to have implications for the assessment of technicality and inventive step across the whole field of computer-implemented inventions.
In short, the conclusions are that:
- in principle, computer simulations can be patentable (this was generally as expected/hoped);
- the mere fact that a simulation is based on technical principles underlying the simulated system is not enough to confer patentability (instead the decision seems to indicate that the intended technical purpose resulting in the alleged technical effect needs to at least be implied in the claims); and
- whether or not a design process is involved is irrelevant (as expected).
While the decision appears to indicate that computer simulations in principle may be patentable, it also indicates that in the Enlarged Board's view most computer-implemented simulations are unlikely to be patentable as 'most "simulations as such" may have few technical effects as far as input and output are concerned', unless the intended technical purpose of the simulation giving rise to the alleged technical effect is at least implied in the claims. This appears to be in disagreement with T1227/05, and seems to narrow the scope of patentability of such computer-implemented simulations in future.
The decision in detail
As a re-cap, the Enlarged Board was posed three questions:
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. [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?
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 Enlarged Board slightly re-framed question 2 to only answer [2B] (holding part 2A as inadmissible) 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?"
Answer to question 1: Patentability of simulations per se
"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".
The Enlarged Board held that computer-implemented simulations are, in principle, patentable, noting that "no group of computer-implemented inventions can a priori be excluded from patent protection." The Board further noted that there is no statement in the EPC that a "simulation as such" is excluded as a "non-invention" in the same way that "a computer program as such" is. The Enlarged Board clarified that they understand a "simulation as such" "to be a simulation process comprising only numerical input and output (irrespective of whether such numerical input/output is based on physical parameters), i.e. without interaction with external physical reality", distinguishing these from physical simulations such as wind tunnel experiments or processes which include the measurement of physical values, which are not simulations as such.
However, when discussing the patentability of such computer-implemented simulations, the Enlarged Board noted that "whether a simulation can solve a technical problem by producing a technical effect which goes beyond the simulation's implementation, can be understood only in the context of the COMVIK approach" (reasons 49) which is part of "case law developed over decades" (reasons 65). When applying this, the Board noted that it is not decisive whether the simulated system or process is technical or not. Rather, it is relevant whether the simulation of the system or process contributes to the solution of a technical problem. It was specifically noted that computer-implemented simulations should not be treated differently when answering this question.
In order to assess whether the simulation contributes to the solution of a technical problem, under the EPO's problem-solution approach one must look at the technical effect achieved by the invention, and that in the context of computer-implemented inventions, these must be technical effects that go beyond the simulation's implementation on a computer – or in other words "any further technical effect going beyond the normal physical (electrical) interactions between the program and the computer on which the simulation is run". The Enlarged Board further clarified that the technical effect going beyond the simulation's implementation can be rephrased as a "technical effect going beyond the simulation's straightforward or unspecified implementation on a standard computer system".
In so doing, the Enlarged Board touched on the ideas of a "virtual technical effect", a "potential technical effect" and a "tangible technical effect", noting that they "fully support the view that a tangible effect is not a requirement under the EPC" and that potential technical effects may be considered if the data resulting from a claimed process is specifically adapted for the purpose of its intended technical use. However, the Enlarged Board noted that "either the technical effect that would result from the intended use of the data could be considered "implied" by the claim, or the intended use of the data (i.e. the use in connection with a technical device) could be considered to extend across substantially the whole scope of the claimed data processing method." (reasons 94). The Board considered these potential technical effects therefore to necessarily become real technical effects when put to their intended use.
On a positive note the Enlarged Board did indicate that computer-implemented simulations "may contribute to technicality if they are, for example, 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" and that "the accuracy of a simulation is a factor that may have an influence on the technical effect going beyond the simulation's implementation and may therefore be taking into consideration in the assessment under Article 56 EPC.". However, in contrast to this, the Enlarged Board noted that "all a simulation does is provide information about the model underlying it" and that: "it would appear that most "simulations as such" may have few technical effects as far as input and output (which consist of data in "simulations as such") are concerned.
Answer to question 2: Technical principles
"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".
The Enlarged Board held that it is neither sufficient nor necessary that a numerical simulation is based on technical principles that underlie the simulated system or process, noting at reasons 88 that "the Enlarged Board does not see a need to require a direct link with (external) physical reality in every case" ... "While a direct link with physical reality, based on features that per se are technical and/or non-technical, is in most cases sufficient to establish technicality, it cannot be a necessary condition, if only because the notion of technicality needs to remain open" (emphasis added). The Enlarged Board went on to confirm at reasons 141 that "were it sufficient ... for the simulation to be based on technical principles, then computer-implemented simulations would hold a privileged position within the wider group of computer-implemented inventions without there being any legal basis for such a privilege".
When discussing the potential patentability of such simulations in terms of their technical contribution, the Enlarged Board held at reasons 119 that: "It may be that some simulations of technical system do not contribute to inventive step. Conversely, following the COMVIK approach, it is possible to envisage simulations of non-technical system (such as weather simulations) that do contribute to inventive step". Later at reasons 131, the Board indicated that use of weather forecast data (obtained from a simulation or modelling system) could contribute to inventive step "if the weather forecasting data is used, for example, to automatically open or close window shutters on a building." However, while the Board stated that technical principles underlying the simulated system or process are not a sufficient condition, it indicated with reference to T625/11 (relating to nuclear fuel rods), which "implied physically controlling the real nuclear reactor underlying the simulation", that the technical effects or potential uses of the computer-implemented simulation which may give rise to the alleged technical effects need to at least be implied by the claims, holding that "when the COMVIK approach is applied to simulations, the underlying models form boundaries, which may be technical or non-technical ... they may contribute to technicality if ... they form the basis for a further technical use of the outcomes of the simulation (e.g. a use having an impact on physical reality). In order to avoid patent protection being granted to non-patentable subject-matter, such further use has to be at least implicitly specified in the claim" (emphasis added).
At reasons 124, the Board again noted that: "Only those technical effects that are at least implied in the claims should be considered in the assessment of inventive step. If the claimed process results in a set of numerical values, it depends on the further use of such data whether a resulting technical effect can be considered in the assessment. If such further use is not, at least implicitly, specified in the claim, it will be disregarded for this purpose".
In an apparent disagreement with the oft-cited decision of T1227/05 (discussed in our earlier article) the Board stated at reasons 128: "in the Enlarged Board's view, calculated numerical data reflecting the physical behaviour of a system modelled in a computer usually cannot establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflects the behaviour of a real system underlying the system. Only in exceptional cases may such calculated effects be considered implied technical effects (for example, if the potential use of such data is limited to technical purposes)".
Question 3: The design process
"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."
On the issue of whether a design process affects the patentability of simulation inventions, the Board commented that "a design process is normally a cognitive exercise. However, it certainly cannot be ruled out that in future case[s] there may be steps within a design process involving simulations which contribute to the technical character of the invention". So it seems that at present the EPO would be minded to consider that a design process, if incorporated into a simulation claim, wouldn't improve the prospects for patentability – but that they can't say for definite that this may not change in future, and so leave the door open on this for now.
In summary, this rather lengthy and detailed decision seems more negative than positive. In positive terms it holds that computer-implemented simulations are patentable and should be treated no differently than any other computer-implemented inventions. However, the use of features relating to the simulation for supporting inventive step under the COMVIK approach now seems somewhat restricted (compared to that defined in previous case law such as T 1227/05) to cases where there is a need to adapt the computer or its functioning or if there is a further technical use of the outcomes of the simulation, with such further use having to be at least implicitly specified in the claim.
At the heart of many of these complex decisions lies the tricky question of what is and what is not "technical" under European patent law. Whilst the Enlarged Board had an opportunity to give guidance on this specific issue, they refrained from doing so, noting that 'the term "technical" must remain open, not least in anticipation of potential new developments'. The Board did, however, discuss differences between computer-implemented simulations of a technical system or process and that of a natural process (such as the weather), noting that "a technical system or process implies that an object is created or a process is run with some purpose based on human creativity" – perhaps giving us some closer definition of what the term "technical" might mean.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.