We have kept a close eye over the past year on G1/19 the referral to the EPO’s Enlarged Board of Appeal in relation to the patentability of simulations. Now that the decision has issued, we thought it would be worth trying to predict how industry may feel about the Enlarged Board’s decision. To do this we have taken a look at the comments in the amicus curiae briefs submitted by all sorts of players who have an interest in patentability of simulations, from companies such as Philips International B.V. to Industry bodies such as CIPA.
Summary of Appeal
To begin with let’s refresh ourselves with what the referral is about. The invention in the appealed application related to a computer implemented method used to simulate the movement of a crowd of pedestrians through an environment. The purpose of the simulation is asserted to aid in designing a venue such as a railway station or a stadium.
The Board of Appeal were of the opinion that the invention lacked an inventive step stating that the claimed steps do not provide a technical effect beyond the implementation of the method on the computer. The applicant argued against this reasoning citing a previous Board of Appeal case T 1227/05 (Circuit simulation I/Infineon Technologies). The Board of Appeal accepted the applicant’s arguments that the present application was analogous with the case in T 1227/05. Despite the similarity between the two cases the Board of Appeal were not convinced by the reasoning given in T 1227/05 and referred the following questions to the Enlarged Board of Appeal for clarification:
- 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?
- 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?
- 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?
Views expressed in the Amicus Curiae Briefs
Through submitting amicus curiae briefs third parties, who are not involved in the case, are given the opportunity to express their views on the referral questions. In each case, each of the amicus curiae briefs submitted include an opinion on what they feel the answers to each of the referral questions should be.
Rather unsurprisingly, the majority of the submissions answered the first question as yes in accordance to the rationale of T1227/05 (Infineon). Indicating that Industry largely feels that the current accepted approach by the EPO is acceptable.
In response to the second question, Industry’s general view appeared to be that the criteria should be the same as any other computer implemented invention. Thus, Industry appears to see simulations as just another type of computer implemented invention, and should be treated as such. These views do not appear to be changed, when answering the third question, as to if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.
Perhaps it is rather unsurprising that there was a near unanimous view from Industry on the answer to each of the questions in the briefs. One thing to take from this is that Industry is calling out for the need of “ongoing consistency in Europe regarding the patentability of inventions involving computer-implemented technology in general, and computer implemented simulations specifically” as highlighted in the briefs filed by EFPIA.
How does this compare to the final decision?
So has the Enlarged Board of Appeal achieved this? Well, it does appear that Industry should be largely happy with the Enlarged Board’s answer to the first question which was answered in the affirmative, stating that “no group of computer implemented inventions can be a priori excluded from patent protection”. So simulations may be patentable at the EPO.
With regard to the second question, the Enlarged Board refused to answer what the relevant criteria are for assessing whether a computer-implemented simulation claimed as such solves a technical problem. Instead they only considered the second part of the second question finding that “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”. This was not strictly the answer that some in Industry desired. For instance, the Intellectual Property Owners Association (IPO) stated that ‘Question 2 should be answered as “Yes, it is a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process”’. However, the request by Industry that the same assessment to be taken as for other computer implemented inventions appears to have been met as the Enlarged Board stated that the long-established COMVIK approach applies to computer-implemented simulations, and must be assessed according to the same criteria as any other computer-implemented invention.
We anticipate there will be a mixed reaction to the answers to the second question and the focus in the decision on technical outcome rather than technical principles. The manner in which the Board downplayed T1227/05 (Infineon) in the decision and the explicit discussion that wrong conclusions had been drawn from it won’t please some. Effectively the decision rows back some of the approaches following T1227/05 (Infineon) and this won’t be universally popular.
The Enlarged Board also set out that the first and second questions do not change if the simulation is claimed as part of a design process. Again consistent with Industry views.
As outlined in the briefs submitted by IP Federation “Computer-implemented simulation is an increasingly important technical tool in modern science and engineering.” Hopefully this decision will provide applicants in this important field the certainty that they are looking for.
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GJE Review: Simulations
GJE’s computer technology team have put together a comprehensive collection of content designed to equip your business with insight into simulations and the role intellectual property has in its development. To view the full collection, click here.