On 10 March 2021, the Enlarged Board of Appeal of the European Patent Office (EPO) handed down its eagerly-awaited decision in G 1/19 (Pedestrian Simulation). Venner Shipley has been involved with the case from the very start: from preparing and filing the application, handling examination, right through to the appeal stage. The key points of the decision include:
- Confirmation that the established approach for assessing inventive step of computer-implemented inventions, the “COMVIK approach”, applies to computer-implemented simulations;
- A finding that features of a simulation do not automatically contribute to the technical character of the invention simply because the simulation is based on technical principles underlying the simulated system;
- Confirmation that the features of a simulation that result in a further technical effect (i.e., a technical effect going beyond the normal electrical interactions within the computer on which the simulation is implemented) may be considered for inventive step;
- Confirmation that technical effects can occur within a computer-implemented process and at the input and output of the process;
- Confirmation that “implied” technical effects may be achieved in combination with an unclaimed device or process outside the computer, if the output data of the computer is technical in nature;
- Comments which diminish the standing and usefulness of T 1227/05 (INFINEON) as case law; and
- Comments which highlight differences in practice between the EPO and the courts and national patent offices in European countries.
What do these findings mean in practice for applicants and practitioners? In short, the decision affirms that all computer-implemented inventions, including simulations, should be examined in the same way, namely using the COMVIK approach. It also provides concise guidance to users as to how to draft specifications involving computer-implemented inventions; the Guidelines for Examination at the EPO will need to be updated to reflect this guidance and the change in status of T 1227/05. The decision may also demand another closer look at whether different outcomes could occur when the same computer-implemented invention is examined at the EPO and national patent offices, such as the UK IPO and the DPMA (the German Patent Office).
COMVIK approach affirmed
Unsurprisingly, T 641/00 (Two identities/COMVIK) formed the foundation of the decision, in particular the principles set out in the headnote of that decision (referred to as the “COMVIK approach”). The Enlarged Board supported the COMVIK approach and confirmed that computer-implemented simulations should be treated no differently from other forms of computer-implemented inventions.
Confirmation that COMVIK should apply in this situation is perhaps unsurprising given how well-established it has become in practice before the EPO, but it is nevertheless welcome that the Enlarged Board took the opportunity to clearly set out its approval of the approach and remove any remaining doubts as to its status.
Technical principles underlying the simulated system
The Enlarged Board has ruled that the question of whether the system or process being simulated is technical or non-technical is not decisive in assessing whether the claim as a whole addresses a technical problem. Interestingly, the Enlarged Board declined to give a definitive opinion as to whether it thought movement of pedestrian crowds in the referred case was technical, but was prepared to accept the referring Board’s conclusion – and the applicant’s argument – that it was. The contrary conclusion might have cast doubt on the admissibility of the whole referral.
The approach taken by the Enlarged Board is clear in moving away from previous interpretations of T1227/05, which had suggested that a simulation would be understood as providing technical character as long as the system being modelled was itself technical in nature. This is not sufficient, or indeed in all cases even necessary.
Further technical effect
Only those features that contribute to the technical character of the invention are considered in the assessment of inventive step. In the context of computer-implemented inventions, however, the technical effect must be one which goes beyond the “normal” physical interactions between the program and the computer on which the program is run. This type of technical effect is referred to as a “further technical effect”.
The Enlarged Board confirmed that such “further technical effects” are typically technical effects on a physical entity in the real world, technical effects requiring a direct link with physical reality or other effects such as technical effects within a computer system or network achieved, for example, by adaptations to the computer system.
Examples of technical effects
The decision provided useful general comments on how and when “technical effects” or “technical interactions” may occur in the context of a computer-implemented process.
As explained by the Enlarged Board (point 85 of the decision):
The arrows represent interactions that are different from abstract data input, data output or internal data processing or transfer. Technical input may consist of a measurement; technical output may exist as a control signal used for controlling a machine. Both technical input and technical output are typically achieved through direct links with physical reality. Adaptations to the computer or its operation, which result in technical effects (e.g. better use of storage capacity or bandwidth), are also examples of features that may contribute to inventive step […]. In sum, technical effects can occur within the computer-implemented process (e.g. by specific adaptations of the computer or of data transfer or storage mechanisms) and at the input and output of this process. Input and output may occur not only at the beginning and the end of a computer-implemented process but also during its execution (e.g. by receiving periodic measurement data and/ or continuously sending control signals to a technical system).
Examples of interactions of this type can be found in the Guidelines for Examination at the EPO, in particular in section G-II, 3.3. It can be expected that at least this section and section G-VII, 220.127.116.11 of the Guidelines will be revised given the Enlarged Board’s comments on T 1227/05.
Implied technical effects
The Enlarged Board examined the issue of potential technical effects. A potential further technical effect might exist if data resulting from a claimed process is specifically adapted for the purposes of its intended technical use, such as controlling a technical machine, provided the data is suitably limited to its intended technical use.
Perhaps one of the most interesting parts of the decision was what the Enlarged Board thought of T 1227/05 and T 625/11 (AREVA). The Enlarged Board declined to reassess the decisions, but rather suggested that they were limited to their own specific circumstances. In particular, the Board commented that: “The often-quoted criterion of T1227/05 that the simulation constitutes an adequately defined technical purpose for a numerical simulation method if it is functionally limited to that purpose should not be taken as a generally applicable criterion of the COMVIK approach …”. The Enlarged Board’s comments diminish the standing and usefulness of T 1227/05 as case law.
Relevance of national case law of EPC member states
The Enlarged Board dodged the issue of relevance of national decisions. In doing so, however, it raises the question whether it might be easier to obtain protection for computer-implemented simulations, for example, in the UK assuming existing case law is still followed. For instance, in Halliburton v Comptroller-General of Patents , the High Court of England and Wales held that a method of designing a drill bit with the help of simulation, not including a step of producing the designed bit, was a technical problem.
In G1/19, the Enlarged Board sought to reconcile several issues raised during the proceedings including whether the fact that the simulated system was technical or not had any bearing on inventive step, the relationship between various forms of technical effect, and whether a direct link with physical reality is a necessary condition, basing its arguments on case law drawn from some surprising (as well as some not-so-surprising) technical fields.
The decision confirms that no group of computer-implemented inventions can be excluded from patent protection as a matter of principle and that computer-implemented simulations do not hold a privileged position in the wider group of computer-implemented inventions. This suggests that all computer-implemented inventions, including those in the areas of artificial intelligence and machine learning, should be treated in the same way when examined at the EPO.
For more updates on the G1/19 case, click here.