When you think of a researcher – a scientist or an engineer – designing a new computer chip, optimising a chemical process, or developing a new medicine, the chances are that you picture him or her sitting in front of a computer manipulating a computer-generated model. Simulation allows the researcher to test different designs, try out alternatives, make substitutions and change variables, before settling on a final design. In this way, the researcher can rapidly try out large numbers of designs before finally turning to expensive real-world testing or costly production.
Given that patents protect technological innovations, you might naturally assume that patents can be used to protect the very type of software used in this activity. That assumption, however, is misplaced. Indeed, in Europe, patent protection for computer-implemented inventions is currently under review with questions referred to the European Patent Office (EPO) Enlarged Board of Appeal in G1/19 (CONNOR/Pedestrian Simulation). The outcome of the referral could have a significant effect on whether these invaluable – indeed essential – tools and processes can in fact be protected and could have far-reaching consequences affecting a wide range of technical areas involving computers.
But G1/19 is not just simply about whether or not computer-implemented simulations are patentable. It also looks at the sorts of things which can be simulated. For example, a tool for verifying the design of a computer chip might seem more worthy of patent protection than one which models the price of stocks and shares. Furthermore, the case also looks at what the claims should cover, in particular, whether a claim to a method of simulation alone is enough or whether the claim should be directed to the wider design process (including simulation), or indeed be limited to a final, real-world product or system.
Before delving into some of the details of the case, it is perhaps helpful to have a brief look at the appeals process and how computer-implemented inventions are handled at the EPO.
Appeals at the EPO
The EPO has a self-contained appeals system. If a department of first instance (typically an examining division or an opposition division) refuses an application, revokes a patent or issues some other form of negative decision, then the affected party can appeal against the decision.
The appeal is heard by one of 28 Technical Boards of Appeal (or simply ‘Boards of Appeal’). Each Board consists of about seven members of which three are drawn to hear a particular appeal. The appeal process includes a written procedure and often involves a hearing (‘oral proceedings’). At the end of the process, a Board hands down a decision which includes its reasoning (the ‘ratio decidendi’, to give it its proper name). Once a decision has been handed down, the case is often remitted back to the department of first instance for further examination with the department bound by the reasoning in the decision. Important decisions are added to the EPO’s Case Law of the Boards of Appeal and significant cases are incorporated into the Guidelines for Examination at the EPO.
About 3,000 appeals are filed each year, most of which result in a decision. Thus, there is a large and ever-expanding body of case law. Given the sheer volume of cases and variations in Board members, it is perhaps unsurprising that different Boards of Appeal can reach different conclusions in similar cases giving diverging reasoning.
This is where the Enlarged Board of Appeal plays an important role: its main task is to ensure uniform application of the law (the European Patent Convention). It decides on points of law which are of fundamental importance that are referred to it either by a Board of Appeal or by the President of the EPO. Referrals of questions are rare: there are only two or three cases referred to the Enlarged Board each year.
This is what is happening in G1/19. Questions have been referred by a Board of Appeal seeking clarification about patentability of simulations.
Computer-Implemented Inventions at the EPO
The case law relating to patentability of computer-implemented inventions is well developed and you might be forgiven for thinking that no referral is needed. Indeed, a referral made over ten years ago by the President of the EPO in G3/08 (Programs for computers) was found to be inadmissible because the Enlarged Board of Appeal did not identify any divergence in Board of Appeal decisions. The present case, however, highlights a potential gap as to what should be considered to be patentable in the realm of computer-implemented inventions.
The current EPO approach to examining computer-implemented inventions is based to a large extent on T 641/00 (Two identities/COMVIK).
In this decision, it was held that, when assessing inventive step of an invention consisting of a mixture of technical and non-technical features and having technical character as a whole, only those features which contribute to the technical character of the claim should be taken into account; those features making no such contribution cannot support the presence of inventive step.
It is important to note that the COMVIK decision did not state that non-technical features should be ignored. Instead, the decision made it clear that such a feature could contribute to technical character (and so be considered when assessing inventive step) provided it met a certain requirement, namely that it interacts with the technical features to change how those aspects of the claim technically function.
This approach is important since in most computer-implemented inventions the distinguishing feature tends to lie in areas that the EPO considers to be non-technical, such as an algorithm or mathematical process.
What does this approach mean in practice?
Stated simply, a non-technical feature can contribute to the technical character in one of two ways, namely by its technical application to a field of technology, i.e., by solving a technical problem in a technical field (i.e., it serves a ‘technical purpose’), or by being adapted to a specific technical implementation. Thus, if neither of these two situations arise, then the non-technical feature will be ignored during the assessment of inventive step and so the claimed invention is likely to be found unpatentable.
A non-technical feature can be considered to serve a technical purpose when, for example, it contributes to controlling external equipment, such as an X-ray machine, or it is used in the processing of physical data, such as digital images or measurements, to achieve a technical effect.
The perceived problem with a simulation is that it does not control any external equipment or process physical data. If a simulation just runs on a computer, then what technical effect does it produce or indeed could it produce?
The application in CONNOR relates to a method of simulating pedestrian crowd movement which can be used to help design or modify a venue, such as a railway station or stadium. It seeks to provide a realistic simulation, in real-world situations, which cannot be adequately modelled by conventional simulators.
The application was refused during examination on the grounds that it lacked an inventive step: the examining division argued that a simulation model was non-technical and that its implementation on a computer was obvious following the approach set out in COMVIK.
So what are the issues? The first relates to the link between the simulation and physical reality. Simulations are run on models which approximate real-world systems. Is there a direct link between the two? Should there be? Remember that the system being modelled may not actually yet exist and indeed may never exist.
The second issue is the role that the simulation plays. Does the simulation merely assist in a cognitive process of verifying the design? A cognitive process is not technical. Therefore, does the simulation provide a technical contribution going beyond its computer implementation? At their heart, the issues concern technical effect and the question “What is the technical effect of a simulation which is run on a computer?”
The appeal cited an earlier Board of Appeal decision T 1227/05 (Circuit simulation I/INFINEON TECHNOLOGIES) in which it was found that simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose. In that case, the simulation was found to be patentable.
The Board of Appeal agreed that INFINEON supported the case in CONNOR. However, the Board questioned the decision’s reasoning in INFINEON.
First, the Board considered that “although a computer-implemented simulation of a circuit or environment is a tool that can perform a function “typical of modern engineering work”, it assists the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behaviour of the virtual circuit or environment designed. The circuit or environment, when realised, may be a technical object, but the cognitive process of theoretically verifying its design appears to be fundamentally non-technical”.
Secondly, the Board took the view that the earlier decision “appears to rely on the greater speed of the computer-implemented method as an argument for finding technicality. But any algorithmically specified procedure that can be carried out mentally can be carried out more quickly if implemented on a computer, and it is not the case that the implementation of a non-technical method on a computer necessarily results in a process providing a technical contribution going beyond its computer implementation”.
The Board acknowledged the significance of numerical development tools and considered that “legal certainty in respect of the patentability of such tools is highly desirable”. Accordingly, it is looking for a decision to be taken on the patentability of simulation methods.
The Board, therefore, referred the following questions to the Enlarged Board of Appeal for decision:
- 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?
The questions are ostensibly based on those that were presented by the appellant during the appeal. Interestingly, another question was formulated by the appellant relating to the extent to which claim features based on psychological considerations could make a technical contribution. The Board, however, decided not to refer a question on this point.
So what do these questions actually mean? The questions can be stated more simply (although not quite on a one-to-one basis) as:
- Are computer-implemented simulations in principle patentable?
- Does the nature of the system or process being simulated matter? In particular, does it help if the simulation concerns the technical aspects of the system or process?
- What form should a claim to a simulation take?
Another way of looking at the questions is whether the test set out in T 1227/05 is correct and, if so, how should it be applied?
The form of claim will have an important bearing on different actors in the chain between software designer, via the user of the software, and manufacturer. For example, if a direct link to physical reality is required, then it still might be possible to obtain a European patent for a product designed using the simulation. However, such a patent is of little use to the designer of the software.
The answers to the referred questions could have far-reaching consequences. Simulations are used in a wide range of technical areas, including drug discovery, chemical processing, transport and communication networks to name but a few. Also, it should be remembered that building a model is a key part of artificial intelligence.
Amicus Curiae Briefs and Comments from EPO President
At the beginning of September, the Enlarged Board of Appeal invited observations from the appellant, interested parties and the EPO President.
The common view was that the first two questions should be answered in the affirmative. Pleasingly, the EPO President submitted comments which supported the view of the appellant. The President was of the view that “a computer-implemented simulation of a technical system or process claimed as such solves a technical problem by producing a technical effect going beyond the computer-implementation when it reflects, at least in part, technical principles underlying the simulated system or process”.
As to the issue of direct link to physical reality, the President stated that “a direct link to physical reality […] is not necessarily required for the finding of a technical effect going beyond the computer-implementation in the context of inventive step”.
Thus, if this view is followed by the Enlarged Board of Appeal, then it will affirm that computer-implemented simulations, in principle, can be patented at the EPO.
It is hoped that the Enlarged Board of Appeal will hand down a decision before the end of 2020.
All being well, the Enlarged Board of Appeal will take a sensible, pragmatic approach and agree that computer-implemented simulations as such are patentable at the EPO. If it takes the opposite view, then the repercussions not just in computer-aided design but also across all fields involving computer-implemented inventions – including AI – would be immense. It would also bring into question whether the patent system in Europe is fit for purpose for inventions coming from new and growing technology sectors or whether it is stuck in the 20th century, content with granting patents only for the technologies of yesteryear.
For more updates on the G1/19 case, click here.