Are Computer Simulations Patentable? Comments on decision G001/19 of EPO Enlarged Board of Appeal

(Source EPO)

The Enlarged Board of Appeal (EBoA) of European Patent Office has issued a decision, G 1/19 (so-called “Simulations”), in which EBoA considers that the established case law on computer-implemented inventions (COMVIK-approach) also applies to computer-implemented simulations.

The decision is based on the European Patent Application No.  03793825.5, which relates to a computer-implemented simulation of a pedestrian's movement through an environment, such as a building. The application was refused by the Examining Division on the grounds that the invention lacked inventive step. Primarily, the refusal was because the application related to simulation, and thus lacking technical features. The decision was appealed by the applicant and the Technical Board of Appeal referred the case to EBoA.

Whether a mixed invention (i.e., including both a device and a computer program) has an inventive step assessed by the EPO in the light of so-called COMVIK-approach. This requires that only claims contributing to the technical character of the invention to be considered for the assessment of the inventive step. Features which themselves are non-technical, can within the scope of the claim, nevertheless contribute to the technical solution of a technical problem and thus to the technical character of the invention.

Questions referred to EBoA were:

  1. When assessing inventive step, can a computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect that goes beyond the implementation of the simulation 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 according to the requirements, as such, solves a technical problem? In particular, is it a sufficient condition that the simulation is at least partly based on technical principles that form the basis of the simulated system or process?”
  3. "What are the answers to the first and second questions about whether the computer-implemented simulation according to the requirements is part of a design process, especially to verify a design?"

EBoA concludes that COMVIK-approach applies also to computer-implemented simulations. They argued that such simulations must be judged according to the same criteria as all other computer-implemented inventions, including the question of whether a claimed function contributes to the technical nature of the invention. Each technical effect that goes beyond the normal electrical interactions in the computer in which the simulation is executed (i.e., no "additional technical effect") may be considered for judgment of inventiveness.

The invention according to EP03793825.5, relates to a simulation process, which only involves numerical input and output without any interactions with the physical reality (according to EBoA's "computer-implemented simulation as such"). EBoA stated that a requirement regarding a computer-implemented invention can contribute to the technical nature of the invention not only if it is related to a technical effect in the form of an input (e.g., measuring a physical value) or output (e.g., generating a control signal for controlling a device). In any case, such a direct connection to a physical reality is not required. In particular, technical effects can also occur within the computer-implemented process (for example through specific adaptations of a computer or of a data transfer).

For the assessment of whether a simulation contributes to the technical character of the invention, it is not decisive whether a technical or non-technical system or process is simulated.

Another important outcome is that these principles apply even if the patent-pending computer-implemented simulation is part of a design process.

Consequently, EBoAs decision has clarified that it is not important whether the simulation itself is technical, but whether it is used to obtain a technical effect. EPOs case law includes extensive number of cases on what such effects can be, but it can be a "direct link to physical reality" in the form of an input, such as a measurement of a physical value used in the simulation or an input, such as the use of the simulation result as a control signal for a machine.

Finally, consider that a non-technical financial system is simulated, and the outcome of the system is a prediction for technical improvement of a production line. The prediction is not in itself a technical problem. However, this will be patentable if e.g., the prediction is used to arrange robots in the production line, but not if it is used to predict the value of the financial outcome. Of course, remaining palatability requirements, i.e., novelty and inventive step still apply.

// Behdad Assadi