Patents are granted at the European Patent Office (EPO) for inventions in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application, Art. 52(1) EPC.
Patents are in particular not granted for claims that relate to mathematical methods, methods for performing mental acts or programs for computers (software) if claimed as such, Art. 52(2) and (3) EPC. However, many fields of commercial interest rely on computer simulations, i.e. on mathematical models imitating real-world processes being implemented via software code on computers. For example, in the automotive field, computer simulations may help to provide models for engines, powertrains or whole automobiles. In the field of e-commerce, simulation of clothing, glasses or even cosmetics on a user’s avatar (“virtual try-on”) has become subject to a considerable number of patent applications world-wide and in particular at the EPO.
The apparent contradiction between the exclusion in particular of software as such and patentability is resolved in principle in the broader context of computer-implemented inventions (CIIs) by established jurisdiction at the EPO that acknowledges that exclusion of patentability can be avoided if a claim covering the computer-implemented invention simply mentions the use of a computer e.g. by explicitly defining “computer-implemented” subject-matter or even if technical means are implied by the claim wording (cf. e.g. decision of a Board of Appeal of the EPO T 697/17). If it can be established that a claim directed to a computer-implemented invention includes at least one or more features that solve a technical problem in a non-obvious way, such claim may be acknowledged to be patentable. Thus, it is crucial for software-based developments to obtain patent protection at the EPO that at least some features of a claim are considered technical features that produce a technical effect. But, can a simulation as such – even if the simulation does not interact with physical reality e.g. by outputting a control signal for controlling a device – produce such technical effect? In particular this question was subject to a referral to the Enlarged Board of Appeal of the EPO that was decided on March 10, 2021 (referral G 1/19) and that is discussed below.
Background – Computer Implemented Inventions at the EPO
As mentioned above, while the European Patent Convention (EPC) excludes computer programs “as such” from patentability, this eligibility hurdle constitutes a rather low threshold. A claim directed to a computer-implemented invention involves use of a technical apparatus, e.g. a computer, computer network or other programmable apparatus, where one or more features are realized wholly or partly by means of a computer program. Such claim is also acknowledged to have technical character (e.g. T 424/03) and therefore directly passes this hurdle. Likewise, this hurdle can be passed by a claim that implies technical means. For example, a claim defining a “method of updating values … in a relational database system” including steps performed by modules of the database system has been recognized as implying technical means as in computer science, the term “relational database system” was acknowledged as relating to a software system implemented in one or more computers for storing, controlling and processing data (cf. T 697/17).
Having passed the eligibility hurdle, it has to be assessed whether a claim includes features that are not known from the prior art, and if any of these features may form the basis of an inventive step. To this end, applying the Problem-and-Solution-Approach well-established at the EPO, it is assessed whether or not the features distinguishing the claim from the prior art have a technical effect – and if yes, whether or not a skilled person, having regard to the prior art as a whole, would have suggested these features in order to solve a correspondingly defined objective technical problem. The Problem-and-Solution-Approach thus focusses the assessment of whether or not claimed subject matter can be inventive on the claimed features that can be a solution to a technical problem explicitly or implicitly derivable from the application.
Thereby, while in particular a claim directed to a computer-implemented invention may include a mix of technical and non-technical features, novelty and inventive step can only be based on the technical features. As established in the decision T 641/00 (COMVIK-Approach) of the EPO Boards of Appeal, to the extent that they do not interact with the technical features of the claim for solving a technical problem, such non-technical features do not provide a contribution to the prior art and are thus ignored in assessing novelty and inventive step. In the context of CIIs, technical effects may on the one hand be based on technical input (e.g. measurements), on technical output (e.g. a control signal for controlling a machine), which may occur at the beginning, at the end or during execution of a computer-implemented process (cf. decision of the Enlarged Board of Appeal of the EPO G 1/19, point E.I.c). On the other hand, technical effects may be based on adaptations to the computer or its operation (cf. ib.). For example, a cost-based optimization of a query in a database system that uses estimates of costs for the computer resources (CPU, main memory, hard disc, etc.) has been acknowledged as involving further technical considerations relating to the internal functioning of the computer system (cf. T 196/11, reasons, point 5.1).
In the field of simulations of cloth, the EPO Examining Division examining European patent application 15 861 236.6 acknowledged a claim directed to a “Computer implemented method for simulating the behavior of a woven fabric at yarn level” that included method steps covering a mathematical algorithm for calculating movement of yarn crossing nodes based on structural information of a woven fabric to be possibly both novel and inventive – even though the claim did not involve any direct interaction with physical reality such as an output of a control signal. The Examining Division explicitly acknowledged the problems of how to provide an appropriate discretization to solve constraints and of how to modify a certain prior art to take into account a certain mass distribution in the simulation to be technical problems solved by corresponding (thus technical) claim features (cf. European Search Opinion in case of said application). However, grant proceedings were stayed in view of the then pending referral G 1/19 which is based on decision T 489/14 in which the Board of Appeal concerned with the case intended to deviate from an earlier Board of Appeal decision in respect of the question of patentability of a simulation method claimed as such (cf. T 489/14, reasons, points 16-19). Accepting the referral, the EPO Enlarged Board of Appeal in particular dealt with the question “[c]an [a] 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?”
Patentability of Computer-Implemented Simulations (CISs) at the EPO – Decision G 1/19
The decision T 489/14 underlying the referral to the Enlarged Board of Appeal G1/19 concerned, in terms of claim 1 of the main request under decision, a computer-implemented European patent application claiming a method of modelling pedestrian crowd movement in an environment. Such model can be used in combination with appropriate computer-aided design tools for optimizing an architectural design of a venue such as a railway station. The application was initially refused by the EPO Examining Division essentially as the claims would only relate to an abstract numerical model that did not serve a technical purpose and did thus not provide any technical effect going beyond its implementation on a notoriously known computer.
In subsequent appeal proceedings, discussing if further technical aspects can be achieved by the claimed method, the Board of Appeal argued in the decision underlying the referral, that a technical effect would require a direct link to physical reality such as a change or a measurement of a physical parameter. The Board of Appeal did not see such direct link to be provided by the modeling of a movement of hypothetical pedestrians in an environment, as in their view, it would not be clear if that environment would exist nowadays or will exist in the future, while the simulation could merely serve for supporting scientific examination or for simulating movement of pedestrians in the virtual world of a computer game.
In the proceedings underlying decision T 489/14, the Appellant referred to earlier decision T 1227/05 in which patentability of a claim directed to a “computer-aided method for numerical simulation of a circuit … which is subject to 1/f noise” was acknowledged to be patentable. In T 1227/05, the Board of Appeal decided that the simulation of such circuit represents a sufficiently determined technical purpose of a computer-aided process, which is functionally limited to this purpose. The Board argued that a technical effect cannot be denied for such simulation procedure just because it does not include the material end product. The Board of Appeal deciding in case T 489/14 accepted that this earlier case would support the Appellant’s case but was not convinced by the earlier decision and considered it a question of law if a simulation method as such can be patentable (cf. T 489/14, reasons, point 19).
Based thereon, the Enlarged Board of Appeal decided in G1/19 on the one hand that the criterion established in T 1227/05 that a simulation may be patentable if it represents a sufficiently determined technical purpose of a computer-aided process and is functionally limited to this purpose, may apply to the specific case decided and potentially other cases, but should not be taken as a general rule (cf. G 1/19, reasons, point 133). On the other hand, the Enlarged Board of Appeal decided that while the presence of a direct link with physical reality may be a sufficient condition to establish presence of a technical effect, it is at the same time not a necessary condition (cf. G 1/19, reasons, point 88). The Enlarged Board of Appeal found that the assessment of whether or not a feature contributes to the technical character of a computer-implemented invention is no different for computer-implemented simulations than for other computer-implemented inventions (cf. G 1/19, reasons, point 117). More specific to simulations, the Enlarged Board of Appeal found that calculated numerical data reflecting the physical behavior of a system modelled in a computer usually cannot establish the technical character of an invention in accordance with the COMVIK approach, 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 an implied technical effect, for example, if the potential use of such data is limited to technical purposes (cf. G 1/19, reasons, point 128).
As a result, when applying the COMVIK Approach to simulations, models underlying simulations may form boundaries which may contribute to technicality if they are for example a reason for adapting the computer or its functioning, or if they form the basis for a further technical use of the outcomes of the simulation, e.g. a use having an impact on physical reality. Thereby, such further use or any adaptations of the computer or its functioning have to be at least implicitly specified in the claim (cf. G 1/19, reasons, point 137). The Enlarged Board of Appeal thus answered the above question in the affirmative. A computer-implemented simulation is to be treated like any CII, and like “any other computer-implemented method, a simulation without an output having a direct link with physical reality may still solve a technical problem” (cf. G 1/19, reasons, point 139).
Applying the results of G 1/19, the Board of Appeal concerned with the case T 489/14 preliminary found that the data reflecting the behavior of a crowd moving through an environment does not contribute to a technical effect for the purpose of assessing inventive step as the potential use of such data is not limited to technical purposes as it can e.g. be used in computer games (cf. communication of the Board of Appeal concerned with T 489/14 dated May 4, 2021, issued in preparation of oral proceedings, point 5).
While in the latter case the Board of Appeal does not appear minded to accept an inventive step in the case concerned, a communication expressing an Examining Division’s intention to grant European patent application 15 306 659.2 was issued about two weeks after the decision G 1/19 was issued. In the latter case, the EPO intends to grant a patent based on a claim directed to “A computer-implemented method for designing a garment”, the method being essentially based on simulating a draping of a digitally modeled three dimensional shape over a digitally modeled three-dimensional manikin. At present, it thus remains to be seen how the deciding bodies of the EPO will implement the findings of G 1/19.
As a result, in general, computer-implemented simulations can be patented at the EPO. The decision G1/19 confirms that independent claims of European patent applications directed to computer-implemented simulations as such may provide technical effects that may form basis for an inventive step. Essentially, claims directed to computer-implemented simulations are to be treated as any other computer-implemented invention and can be assessed using the COMVIK Approach. As in case of any computer-implemented invention, it is thus crucial that a patent application drafted for a computer simulation specifically defines technical features that cause corresponding technical effects and that provide respective solutions to technical problems. In particular in the case of computer-implemented simulations, it appears advisable to draft corresponding applications in a way to ensure that a potential use of data subject-matter of the claims is or can be limited to a clearly technical purpose.