On 15th July 2020, the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) live-streamed oral proceedings to the public for the first time. The EBA considered questions regarding the patentability of computer-implemented simulations in G1/19 (CONNOR/Pedestrian Simulation).

Pawel Piotrowicz, Michael Fischer and Ralf Bucher from Venner Shipley attended the hearing.

Here, Pawel gives us his unique insight into the case, his experience presenting at the hearing and how he thinks the case may develop.

Why have questions been referred to the EBA?

Before I answer the question, let me first explain the structure of the EPO.

The EPO has different tiers of decision-making panels.

At the bottom, there are the departments of first instance including Examining Divisions and Opposition Divisions. These Divisions handle the day-to-day tasks of examining European patent applications and considering oppositions of granted European patents.

The Technical Boards of Appeal lie above the departments of first instance. A decision taken by a department of first instance, such as a decision to refuse an application, can be appealed which is heard by a Technical Boards of Appeal.

The Boards of Appeal are independent of the EPO and are bound only by the European Patent Convention (EPC). There are 28 Technical Boards of Appeal, and each Technical Board of Appeal (TBA) is made up of between six and 12 members. Around 3,000 appeals are filed each year and appeals are allocated to one of the 28 Technical Boards of Appeal according to technical area. Although there are several members in each TBA, only three members from a Board are selected to form a particular “composition” for a given appeal. The EBA sits at the top, above the Technical Boards of Appeal. The main task of the EBA is to ensure the uniform application of the EPC. It decides on points of law of fundamental importance referred to it either by a TBA or by the President of the EPO.

Now, as you can see, there are lots of Technical Boards of Appeal involving different members and so it is perhaps unsurprising that different Technical Boards in different appeals sometime come to different views and interpret the EPC differently. Thus, referrals to the EBA are made from time to time, typically about two to four a year.

This referral concerns to what extent computer-implemented simulations are patentable under the EPC and how applications relating to these types of inventions should be examined by departments of first instance and by Technical Boards of Appeal.

The referral to the EBA is based on questions submitted by TBA 3.05.07 in T 0489/14 (Pedestrian simulation/CONNOR), which in turn were based on questions we formulated during the appeal.

This is only the second time that the EBA has been asked to consider questions on computer-implemented inventions. The answer is likely to affect patentability of not only simulations, but also other forms of computer-implemented inventions, such as those involving artificial intelligence and machine learning.

The case has arisen because EPO examines computer-implemented inventions in a particular way, and simulations do not sit comfortably in this framework. Despite simulations being used increasingly instead of laboratory experiments, for instance, to discover new drugs, to design new materials, or to work out how complex systems work, simulations themselves can be seen as being non-technical. When asked to consider patentability of simulations, different Technical Boards of Appeal were coming to different views. In particular, different Technical Boards of Appeal were coming to different views as to whether an approach set out in a TBA decision T1227/05 (INFINEON) was correct and whether, among other things, a direct link between the simulation and the real world was needed, for example, by explicitly stating in the claim that the simulated product be made.

The TBA in this case believed that submitting questions to the EBA would resolve the issue and provide guidance on the wider topic.

How has Venner Shipley been involved?

Venner Shipley has been involved with this case from the very beginning, since 2002: I drafted the initial patent specification, filed and prosecuted the international application and then the European application. I also handled the appeal before the TBA, and been involved in the referral to the EBA.

What is the latest with the case?

In September last year, the EBA invited comments from the applicant, the President of the EPO and other interested parties. Then, in April this year, the EBA invited us and the President of the EPO to attend oral proceedings which were scheduled for July.

Given the travel restrictions arising from the COVID-19 pandemic, I was lucky to be able to travel to Munich. I was fortunate to be able to do so and along with my colleagues from Venner Shipley’s Munich office, Michael Fischer and Ralf Bucher, present arguments at the hearing.

Attending oral proceedings before the EBA is usual in itself, but the hearing was unusual for another reason. Normally, members of the public would be able to attend the oral proceedings. However, the COVID-19 restrictions made this much more difficult. We were asked whether we would be happy for the hearing to be streamed and we agreed. Also, the hearing was streamed on an internal EPO TV channel which I did not know existed!

Tell me about the hearing

The hearing took place at the EPO’s Isar Building in Munich in one of the few rooms large enough to accommodate all of the participants satisfying the rules on minimum physical distancing.

The hearing was attended by seven members of the EBA, by Ralf, Michael and me on behalf of the applicant and by Ms Heli Pihlajamaa, Ms Doris Thums and Mr Miguel Domingo Vecchioni on behalf of the EPO President, as well as a dozen technical staff and a handful of observers.

The seating was similar to that you see in General Assembly of the United Nations: we were sat in a large circle with the Enlarged Board on one side, and the rest of us on the other.

The President of the EBA opened the hearing and I was invited to answer specific questions that the EBA has posed prior to the hearing, and to present our opinions on the issues, the existing case law and the different ways of examining these types of cases.

As well as presenting our views, the representatives of the EPO President also gave their comments. The EBA asked questions during the hearing.

What was it like knowing you were being livestreamed to 1000s of people around the world?

To be honest, I did not think too much about it. I was focussed on the hearing itself and on how the members of EBA were responding to arguments. I would have been more nervous had there been thousands of people in the same room at the hearing! The fact that it was being streamed made it easier.

The live-streaming set-up worked well. There were TV cameras arranged around the hall and when a camera was streaming, a light on top of the camera would come on. Had it not been for the light, I would have forgotten that the hearing was being streamed. I did not find the cameras were intrusive or distracting.

What was the view of the EPO President?

The representatives of the EPO President seemed to support what we were arguing.

Of course, the EPO has its own view on how the EPC should be interpreted, not least because EPO Examining Divisions are given the day-to-day responsibility of examining patent applications, but it appeared that we agree on most points. In fact, as part of our argument, we presented an example of a computer simulation of a wind tunnel, which we argued should be patentable. Mr Vecchioni from the EPO also used a wind tunnel as an example.

Is there a recording of the hearing I can see?

Unfortunately, not. A written decision, however, will be handed down soon and, when it does, will be available for anyone to download and read.

What will happen next?

We are waiting for the EBA to hand down its decision, which we expect to come any time now. Once that happens, the TBA will pick up the appeal again and decide whether to allow or dismiss the appeal. In assessing the appeal, the TBA will base its analysis on the answers provided by the EBA. The TBA might even remit the case back to the Examining Division so the final outcome of the case might not be known for some time.

What is the expected outcome of the referral?

Simply put, there are three possible outcomes of the referral.

One is for it to become harder to obtain European patents for simulations. I do not think this would be justified and I certainly hope this is not the outcome.

Another outcome is for it to become easier to patent simulations at the EPO. Obviously, this would be a great result, but I am not sure it will happen.

The third outcome is to preserve the status quo. I would be happy with this and think it would strike a reasonable balance between, on the one hand, providing sufficient certainty and guidance on what can and cannot be patented at the EPO, while on the other, giving enough flexibility for EPO examiners and Boards of Appeal to decide either way in borderline cases.

Of course, as soon as we know the outcome, we will share the news and our analysis on our website. In the meantime, if readers have any questions, then I would be happy to answer them.