G 1/19 released: The Enlarged Board of Appeal decides on the Patenting of Computer-implemented Simulations and Designs
Dr. Daniel Herrmann (DE), BOEHMERT & BOEHMERT, European Patent and Trademark Attorney, Patentanwalt
Felix Hermann (DE), BOEHMERT & BOEHMERT, European Patent and Trademark Attorney, Patentanwalt
The Enlarged Board of Appeal of the EPO has just now released its decision G 1/19 and concludes that computer-implemented numerical simulations and designs of a system or process should not be treated any different from any other computer-implemented invention. In particular, the Enlarged Board clearly rejects the Board’s view in the referral decision T 0489/14 that a technical effect provided by a simulation requires, at a minimum, a direct link with physical reality. However, G 1/19 also makes it clear that the widely discussed decision T 1227/05 should not serve as a lighthouse decision providing general guidance for all cases of computer-implemented simulations and design processes. G 1/19 states that it is not decisive whether the simulated or designed system or process is technical or not. Rather, it is relevant whether the simulation or design process as part of the claimed invention contributes to the solution of a technical problem. This question must be answered using the same criteria as for any other computer-implemented invention. G 1/19 further concretizes the criteria to be applied when assessing inventive step for computer-implemented inventions and provides useful examples for technical aspects of computer-implemented simulations and design processes.
I. Background of G 1/19
According to EPO standards, a mathematical method, to which software for simulations and design processes are assigned, may contribute to the technical character of an invention, i.e. contribute to producing a technical effect, by its technical application/purpose and/or by being adapted to a specific technical implementation (EPO GL 2020, G-II, 3.3).
In 2006, Board 3.5.01 of the EPO Boards of Appeal issued a decision, T 1227/05, which acknowledged technical character of all features claimed in context of a specific simulation of an electronic circuit subject to 1/f noise. According to T 1227/05, a claimed invention being functionally limited to a computer-implemented simulation of the performance of an electronic circuit subject to 1/f noise qualifies as such technical purpose conferring technical character to the simulation. Also, T 1227/05 found that such computer-implemented simulation methods could not be denied a technical effect merely on the ground that they precede actual production or do not comprise a step of manufacturing the physical end product.
In 2018, the EPO significantly revised the sections of the Guidelines for Examination (EPO GL, G-II, 3.3; G-VII, 220.127.116.11) dealing with the patenting of mathematical methods in accordance with T 1227/05.
In 2019, Board 3.5.07 of the EPO Boards of Appeal in T 0489/14 disagreed with the findings and the criteria set out in T 1227/05 and demanded strict minimum requirements to acknowledge technical character.
In the case underlying T 0489/14, the claims of the main request were directed to a computer-implemented method of modelling pedestrian movement in an environment. The claimed invention focused on operations of simulating movement of pedestrians through the environment. On the one hand, the Board tended to consider the features relating to the simulation as mental acts, and thus as non-technical features. (see Reasons 5 to 8, 12 and 17). In particular, the Board argued that a technical effect would require a direct link of the simulation to physical reality, such as a change in or a measurement of a physical entity (Reasons 11 and 23). On the other hand, the Board also acknowledged the findings of T 1227/05 and concluded that the features relating to the simulation would be technical features contributing to the solution of a technical problem when following the reasons of T 1227/05 (see Reasons 13 to 15 of T 0489/14).
Overall, the Board concluded that both, the question of patentability of simulation methods would be a point of law of fundamental importance and the Board’s intended deviation from the findings in T 1227/05 and referred the following questions to the Enlarged Board in G 1/19:
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?
One of the authors has published an article with more details about the above and other T decisions, the 2018 revisions of the Guidelines for Examination regarding the patenting of mathematical methods as well as this referral on pages 19-25 in issue 2/2019 of this journal.
II. The Decision G 1/19
II.1 Admissibility of the Referred Questions
The referred questions have been interpreted by the Enlarged Board as follows:
Question 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 further technical effect that goes beyond the normal physical interaction between a program and a computer on which the simulation is run, if the computer-implemented simulation is claimed as such (G 1/19, see, e.g., Reasons 47 and 50)?
Question 2: If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented 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, solves a technical problem (“Question 2A” of G 1/19)? In particular, is it a sufficient condition that the simulation is based, at least in part, on the scientific (e.g. mathematical and physical) principles applied within the boundaries set by the (natural or technical) system or process (“Question 2B” of G 1/19, see, e.g., Reasons 47 and 53)?
Question 3 has been interpreted along the same lines as questions 1 and 2. Out of the three referred questions, the Enlarged Board accepted questions 1 and 3, and question 2B only. The question 2A has not been admitted, since the Enlarged Board considers it impossible to give an exhaustive list of (positive or negative, alternative or cumulative) criteria, and this question must not be answered for the referring Board to be able to come to a conclusion in T 0489/14.
II.2 Technical Character of Computer-Implemented Simulations and Design Processes
II.2.1 The Decisions T 1227/05 vs. T 0489/14
On the one hand, the Enlarged Board indicates with regard to T 1227/05 that limiting a claim directed to a simulation software to the purpose of stimulating a real technical device or process is normally not sufficient to acknowledge a technical character of all features claimed in context of the simulation. G 1/19 gives multiple reasons in this regard.
Firstly, the invention claimed is not the technical device or the process to be simulated, but rather the simulation of the system or process itself. Accordingly, it is the claimed simulation of the system or process that must meet the requirements of the EPC and must therefore be novel and inventive over the prior art (G 1/19, Reasons point 125).
Secondly, referring to G 3/08, the Enlarged Board acknowledges that a simulation is necessarily based on the principles underlying the simulated system or process and that technical considerations associated with the system or process to be simulated typically form the basis of the mental act of establishing the model of the technical device or process being used in the simulation. The Enlarged Board holds that such mental act of establishing the model (and equations/algorithms) underlying the simulation is devoid of technical character. Thus, the model underlying a simulation forms constraints (technical or not) which are not technical for the purpose of the simulation itself. This is because the technical considerations being used when establishing the model underlying the simulation do normally not translate into a technical effect being rendered by the execution of the simulation (G 1/19, see, e.g., Reasons 106-112, 121, 137, 141).
Therefore, the technical considerations relevant for the assessment of inventive step are only those technical considerations that pertain to the invention, i.e. to the simulation of the device or process, rather than the simulated system or process (G 1/19, Reasons point 125).
Thirdly, simulating a property/behavior of a technical system or process produces data, which may or may not be used for achieving a technical effect in the real world, e.g. the control or development of the technical device or process (G 1/19, Reasons 98, 129). This is problematic in the light of the well-accepted principles of T 939/92 that essentially all embodiments falling within the scope of independent claim must credibly provide the technical effect and solve the technical problem argued as part of the problem-solution-approach (G 1/19, Reasons 82, 98). In other words, if only some but not all of the embodiments of the claimed subject matter credibly provide the argued technical effect to be relied on the independent claim must be limited to the embodiments providing basis for this technical effect (G 1/19, Reasons point 82). Unless the data generated by the simulation exceptionally imply their technical use which can be the basis for an implied technical effect, the data generated by the simulation can typically not be attributed a potential technical effect associated with an intended but not claimed technical use. Therefore, in general, a claim not involving a technical link to the real world (e.g. by the control of the technical system or process being simulated) normally encompasses embodiments where the data produced by the simulation can be used also for non-technical purposes, such as for scientific insights (G 1/19, Reasons 98, 129).
In discussing T 1227/05, the Enlarged Board takes the view that calculated (numerical) data reflecting the physical behavior of a system modelled in a computer usually cannot establish the technical character of the invention in accordance with the COMVIK approach (T 641/00, hn.), even if the calculated behavior adequately reflects the behavior of a real system underlying the simulation. Only in exceptional cases may such calculated effects be considered implied technical effects, for example, if the potential use of such data of the simulation is limited to technical purposes (G 1/19, Reasons point 128). However, the Enlarged Board does not consider its role to re-assess T 1227/05 and agrees with the findings of T 1227/05 if they are understood as being that the claimed simulation process of this particular case possessed an intrinsically technical function. Moreover, the Enlarged Board emphasizes that the often-quoted criterion of T 1227/05 that the simulation constitutes an adequately defined technical purpose for numerical simulation method if it is functionally limited to that purpose should not be taken as a general applicable criterion in applying the COMVIK approach to computer-implemented simulations, since the findings of this decision were based on specific circumstances which do not apply in general (G 1/19, Reasons 128, 133) and thereby took the lighthouse character away from this decision. Accordingly, a revision of the EPO Guidelines for Examination seems probable.
On the other hand, the Enlarged Board clearly states that a direct link with (external) physical reality, as demanded by T 0489/14, is not a requirement or necessary condition to acknowledge a technical character of the features claimed in context of a simulation or design process, even though such a link would in most cases be sufficient to establish technicality of those features (G 1/19, Reasons 88, 139, 85).
Firstly, this is because a technical effect can also occur within the computer-implemented process itself. A simulation without an input or output having a direct link with physical reality can still solve a technical problem, for example by adaptation of the simulation software to the internal functioning of the computer system or network (e.g. to achieve better use of storage capacity or bandwidth, G 1/19, Reasons 85, 115-116).
Secondly, potential technical effects, i.e. effects achieved only in combination with non-claimed features, can be considered in course of assessing the technical character of the claimed features. Those potential technical effects are to be distinguished from virtual or calculated effects, i.e. technical effects which are not achieved through an interaction with physical reality, but are calculated in such a way as to correspond closely to “real” technical effects or physical entities, and direct technical effects on physical reality. Such potential technical effects may, for example, be attributed to data or data structures which are especially adapted for the purposes of its intended technical use. In such cases, 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 could be considered to extend across substantially the whole scope of the claimed data processing method (G 1/19, Reasons 89-97).
To the relief of many applicants, G 1/19 did therefore not accept the strict requirements for the acknowledgment of technical character of features claimed in the context of a computer-implemented simulation as demanded by T 0489/14.
II.2.2 Implications for the Referred Questions
The “de-facto standard” at the EPO for the assessment of inventions having a mix of technical and “non-technical” features as defined in the headnotes of T 641/00 (COMVIK approach) is also considered by the Enlarged Board to be suitable for the assessment of computer-implemented simulations. According to the COMVIK approach, the decisive question for the assessment of which features of a simulation of a system or process are technical features, and thus relevant for the assessment of inventive step, is whether the simulation or design process contributes to the solution of a technical problem by producing a technical effect.
In line with this understanding of computer-implemented simulations being not different from other computer-implemented inventions, and in view of the above outlined discussion of T 0489/14, it appears consequent that the Enlarged Board answers questions 1 and 3 in the affirmative, noting that the Enlarged Board does not recognize there being any relevant differences between a computer-implemented simulation or a computer-implemented design process, in particular a process for verifying a design. Similarly, it appears also consequent in consideration of the COMVIK approach and the above outlined discussion of T 1227/05 that question 2B is answered by the Enlarged Board in the negative noting that it is neither a sufficient nor a necessary condition that a numerical simulation is based, at least in part, on technical principles that underlie the simulated system or process. The same applies to a design process (G 1/19, Reasons 138-144).
In applying the COMVIK approach, the Enlarged Board finds that only those features of the claimed simulation contributing to a technical effect achieved by the simulation may be considered technical and relevant for the inventive step assessment. Therefore, the question arises which criteria the Enlarged Board considers generally applicable to the assessment of the technical contribution made by a computer-implemented (numerical) simulation or design processes. The following summarizes the guidance provided by the Enlarged Board in G 1/19. The Enlarged Board indicates that features of the simulation or design process may contribute to the technical character of the invention, if, for example, they provide basis for:
- technical input, such as a measurement from a sensor (G 1/19 Reasons point 85),
- technical output, such as a control signal used to control a machine (G 1/19, Reasons point 85),
- output of “functional data” intended for controlling a technical device, when being specifically adapted for purposes of its intended technical use (G 1/19, Reasons 92-94),
- adaptations of the design or simulation (software) to the computer or its operation which result in technical effects, such as better use of storage capacity or bandwidth (G 1/19, Reasons 85, 115-116), or
- adapting the computer or its functioning to the simulation (G 1/19, Reasons 110, 137).
In summary, technical effects can occur within the computer-implemented simulation or design process and at the input and the output of this simulation or design process, wherein the Enlarged Board emphasizes, that this would not be an exhaustive list.
To the disadvantage of many applicants, the Enlarged Board states that whether a simulation contributes to the technical character of the claimed subject-matter does not depend on the quality of the underlying model or the degree to which the simulation represents “reality”. Another remarkable consideration of the Enlarged Board in connection with the accuracy of a simulation is the finding that the accuracy of a simulation is a factor that may nevertheless have an influence on a technical effect going beyond the simulation’s implementation on the computer and may therefore be taken into consideration in the assessment of inventive step under Article 56 EPC. For the purposes of Article 56 EPC, it can be that an alleged improvement is not achieved if the simulation is not accurate enough for its intended (technical) purpose, and the claimed simulation process may be considered non-inventive as a consequence even if the simulation contributes to the technical character of the invention. Even more, if an improvement or a specific function is reflected in the claim and cannot be achieved by means of a simulation that does not reflect “reality” accurately enough, objections to lack of enablement under Article 83 EPC may arise if the skilled person is unable to find the necessary models and equations without undue burden (G 1/19, Reason point 111).
II.3 Answers to the Questions referred to the Enlarged Board of Appeal
In summary, the Enlarged Board decided that the questions of law referred are answered 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, serve 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.
The Enlarged Board’s statement that computer-implemented simulations and design processes are not different from any other computer-implemented processes, and the reliance and strict application of the principles of the COMVIK approach, once again confirm and manifest the EPO’s established case law on computer-implemented inventions. While the good news for applicants is that the Enlarged Board did not follow the strict proposal by T 0489/14, the Enlarged Board confirmed the overall strict praxis of the assessment of computer-implemented inventions under the case law of the EPO Boards of Appeal also for computer implemented simulations and design processes.
As simulation and design processes are often developed to run on conventional computer hardware, it will become even more difficult for applicants to claim and protect the simulation or design process independent of a particular and specific technical input or output or (implied) use of the results of the simulation or design process, e.g. for controlling a machine or manufacturing a product. This also imposes that applications in this field have to be carefully drafted in consideration of whether the technical character of the invention is arguably based on a technical effect achieved by the simulation or design software when running on the computer. Furthermore, the accuracy of the simulation or design process may also impact the credibility of the simulation or design process achieving the argued technical effect, which requires applicants to carefully consider the level of detail of the simulation and design method that needs to be disclosed in the application and also the number of alternatives that must be disclosed to support the invention over a broader scope than a single specific example implementation.