Following on from our article commenting on the recent referral to the Enlarged Board of Appeal (G 1/19) the EPO have published a further notice concerning the staying of proceedings. The notice indicates that the President of the EPO has decided that all proceedings before the EPO in which the decision depends entirely on the outcome of the referral (i.e. relates to computer simulations) will be stayed until the Enlarged Board of Appeal issues its decision. This includes cases that are before both the examining and opposition divisions.
The EPO have indicated that they will inform any applicants where this staying of proceedings has taken effect. We expect to receive these notices soon. This only applies to cases relating to simulations that would be affected by the G 1/19 referral. This in effect will involve any proceedings before the examining and opposition division to be suspended until the decision of the referral has taken place. It is difficult to say how long it will be until the decision is issued, so it is unpredictable to say how long these stays will be. Meanwhile applicants should note that renewal fees will still need to be paid during the stay, thus potentially adding significant overall cost, particularly if they are adversely affected by how the Enlarged Board of Appeal answers any of the questions.
If you have any questions on this latest notice, are concerned that one of your applications will be held back, or feel that one of your cases before the EPO should be stayed based on this notice, then please do get in touch with your GJE contact.
The Official Notice
The notice that was included in April’s version of the Official Journal is reproduced below:
Referral G 1/19 (“Patentability of computer-implemented simulations”) is pending before the Enlarged Board of Appeal. The three questions referred seek, in particular, to clarify the extent to which a computer-implemented simulation of a technical system or process can solve a technical problem by producing a technical effect and thus contribute to an inventive step. The three questions referred to the Enlarged Board of Appeal can be found in decision T 489/14.
The President of the EPO has decided that, in view of the potential impact of the referral, all proceedings before EPO examining and opposition divisions in which the decision depends entirely on the outcome of the referral will be stayed ex officio until the Enlarged Board of Appeal issues its decision.
This concerns cases in which
(a) the assessment of inventive step requires deciding whether or not a computer-implemented simulation of a technical system or process, claimed either as such or as part of a design process, can be considered to produce a technical effect which goes beyond the simulation’s implementation on a computer (i.e. whether or not the simulation achieved can itself qualify as a technical effect for the purposes of assessing inventive step, see Guidelines for Examination in the EPO, G-VII, 5.4), and
(b) the outcome of the proceedings depends entirely on how the Enlarged Board answers the points of law referred to it.
Condition (a) is also met where a claim comprises features other than the computer-implemented simulation but these features form part of the state of the art, make no technical contribution or are obvious to the person skilled in the art and do not interact with the simulation.
For the purposes of assessing whether the above conditions are met, the term “simulation” is to be interpreted as meaning an approximate imitation of the operation of a system based on a model of that system (T 489/14, point 21 of the Reasons).
If proceedings are stayed, the examining or opposition division concerned will inform the parties accordingly (see Guidelines for Examination in the EPO, E-VII, 3). At the same time, it will withdraw any communications setting them time limits for a response, and will despatch no further such communications until the Enlarged Board has given its decision, whereupon a communication will be issued concerning the resumption of proceedings.
The present notice applies immediately and solely to those cases affected by referral G 1/19.