Monday - 04 March 2019

New Referral to EPO’s Enlarged Board of Appeal on Computer-Implemented Inventions

On 28 February 2019, in its decision T0489/14 (Pedestrian Simulation/Connor), the EPO’s Technical Board of Appeal referred three questions relating to computer-implemented inventions to the Enlarged Board of Appeal. The case concerns a simulation run on a computer, and the questions relate to the extent to which such a simulation can be considered to be based on technical principles, as follows:

  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?

The case relates to simulating the movement of pedestrians through an environment. The claims under consideration concern the method of simulation itself, and also methods of designing a building structure based on the simulation and displaying the simulation.

The Enlarged Board of Appeal is the EPO’s most senior tribunal, and considers cases on just a few, very limited grounds. The only other time that questions concerning computer-implemented inventions, and the associated exclusions from patentability, were referred to the Enlarged Board of Appeal, the referral was considered inadmissible (see G0003/08). In that case, the Board was of the view that the there were no “inconsistencies between the grounds of the decisions which the referral …. alleges are divergent”, and chose only to make obiter comments on the state of the law. It remains to be seen whether the Enlarged Board of Appeal will accept the current referral as admissible, but if it does it will be the first time that the Board will issue a reasoned decision in this area of the law.

The alleged inconsistency in the law that is the basis for the present referral relates to a relatively narrow issue. Specifically, in an earlier decision concerning computer simulation, T 1227/05 (Circuit simulation I/Infineon Technologies), the Technical Board of Appeal considered that the described simulation method was part of a fabrication process (for making a circuit), and as such the relevant inventions could not “be denied a technical effect merely on the ground that they do not yet incorporate the physical end product”. In the present case, the Technical Board of Appeal agrees that this earlier case is analogous, but raises concerns that the earlier case is effectively unreliable given the general legal background. The referral seeks clarity on whether the earlier case should be followed.

Assuming the Enlarged Board of Appeal accepts the referral and that there is an ensuing decision, or the Board offers a reasoned opinion dealing with the issues, it seems likely that this will have ramifications not just for inventions specifically relating to a computer simulation, but also in analogous fields and, in particular, for software that uses AI or machine learning to model systems and processes without necessarily controlling or interacting with a tangible apparatus. Progress of the case will therefore be watched with interest over the next year or two.

For more information about this, and to find out how we can help you, please contact Peter Gray.

About the author

Peter Gray

Partner

Peter qualified as a European Patent Attorney and UK Chartered Patent Attorney in 2000. Prior to joining Mathys & Squire in 2018, he established and ran his own firm for many years. He specialises in patents relating to physics based technologies.