Decision G 1/19 of the Enlarged Board of Appeal of the European Patent Office

| Vera Vallone

The referral of G 1/19 is based on the case T 489/14 (pedestrian simulation). As T 489/14 has already been subject to previous articles in this journal, the background information will be kept brief.

The claims of the application in the referred case T 489/14 relate to a method of simulating movements of autonomous entities (such as pedestrians) through an environment. An exemplary use is a method of modelling pedestrian crowd movement for evacuation models, e.g. in railway stations. The claims include: (i) a numerical model of a system or a process; (ii) mathematical equations representing the behavior of the model (which e.g. involves mathematical calculations of the sum of inconvenience and frustration); and (iii) algorithms providing numerical output that represents the calculated state of the modelled system or process. The main features seem to be non-technical features and therefore cannot be considered for the inventive step.

However, in T 489/14 the Technical Board of Appeal (TBA) was confronted with the earlier decision T 1227/05, in which the applicant argued that the claimed features did contribute to the technical character although the individual features were non-technical. The TBA then based the referral to the EBA on its intention to diverge from the existing case law and approached the EBA with three questions, from which the second question was further divided into two questions, from which only the second «2B» was considered admissible.

Question 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?

Question 2B: For the assessment of whether a computer-implemented simulation claimed as such solves a technical problem, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

Question 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 referral can be boiled down to the question whether a claimed simulation as such is able to have a technical character and if so, how the technical character of the claimed simulation would be assessed. The EBA decided the following (the numeration matches the above-mentioned questions):

• «1.
  A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer.
• 2B.
  For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
• 3.
  The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.»

Unsurprisingly, decision T 641/00 (Two identities/COMVIK; hereinafter the «COMVIK approach») formed the basis of the EBA’s decision.

The COMVIK approach introduced two hurdles in the assessment of claims containing technical and non-technical features. In a first step, claims are assessed for their technical character as a whole (1st hurdle). The overall assessment must be distinguished from further examination points such as the inventive step. In a second step, the features are examined individually as to their technical character, and only the features contributing to the technical character are examined as to their inventive step (2nd hurdle).

The decision further held that «the COMVIK approach is suitable for the assessment of computer-implemented simulations. Like any other computer-implemented inventions, numerical simulations may be patentable if an inventive step can be based on features contributing to the technical character of the claimed method.»

In conclusion, the EBA supported the COMVIK approach and confirmed that computer-implemented simulations should not be treated differently from other forms of computer-implemented inventions. The EBA has thus unequivocally approved of the COMVIK approach and removed any doubts as to its validity. As a result, all computer-implemented inventions in all fields are assessed in the same way.

When applying the «two hurdle» COMVIK approach, the EBA pointed out that between the invention’s eligibility under Article 52 EPC (1st hurdle) and whether the invention is based on an inventive step (2nd hurdle), there is an intermediate step for distinguishing technical and non-technical features. In the words of the EBA, «[t]his additional intermediate step serves as a filter for features contributing to a technical solution of a technical problem in view of the closest prior art. Only those distinguishing features can contribute to inventive step.»

The EBA highlighted that «[i]t is a general principle that the question whether a feature contributes to the technical character of the claimed subject-matter is to be assessed in view of the whole scope of the claim.»

In other words, the EBA made it clear that in assessing the contribution of a feature to the technical character of an invention, this feature needs to contribute to the technical character of the claimed subject-matter over the whole scope of the claim. The requirement is not met, «if the claimed feature in question contributes to the technical character only for certain specific embodiments of the claimed invention.»

As with any other computer-implemented invention and as stated above, the technical contribution of features of computer-implemented simulations is assessed through application of the COMVIK approach. Regarding the underlying model of the simulation, the EBA held that the simulation models «form boundaries, which may be technical or non-technical. In terms of simulation itself, these boundaries are not technical. However, they may contribute to technicality if, for example, they are 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 rea | lity).» The EBA further adds that in order to avoid patent protection for non-patentable subject-matter, the further technical use of the outcome of the simulation «has to be at least implicitly specified in the claim.»

In other words, the technical or non-technical nature of the system or process being simulated as the underlying model of the simulation is not decisive in assessing whether the simulations of technical systems do contribute to inventive step. If the claim does not specify the technical purpose of a model underlying the simulation and it therefore may be used with or without a technical purpose, then the claim lacks technical character. By taking this approach, the EBA distanced itself from decision T 1227/05, which stated that as long as the model underlying the simulation was technical in nature, the simulation would provide technical character.

For a feature to be considered contributory to inventive step, a «technical effect going beyond the simulation’s straightforward or unspecified implementation on a standard computer system» is required (i.e. a further technical effect). The EBA shows in a simplified illustration how a further technical effect may occur in a computer-implemented process.

Figure 1: G 1/19, p. 39.

As indicated by arrows in the illustration, a technical effect can occur at the input of the computer-implemented process (e.g. a measurement), at the output of the process (e.g. as a control signal used for controlling a machine), during the process (e.g. internal data processing or transfer,) or within the process (e.g. adaptions of data transfer or a storage mechanism). Technical input as well as technical output «are typically achieved through direct links with physical reality». However the EBA held that «while a direct link with physical reality, based on features that per se are technical and/or non-technical, is in most cases sufficient to establish technicality, it cannot be a necessary condition, if only because the notion of technicality needs to remain open.» The EBA considers that there are examples of so-called «potential technical effects» which need to be distinguished from direct technical effects on physical reality.

The EBA examined the issue of potential technical effects. It held that the potential effects, which may be considered to be technical effects, are referred to as so-called «downstream effects» which may or may not be caused by the data resulting from a claimed process that is specifically adapted for the purposes of its intended technical use. Although the data output is necessarily caused by the running of a program on a computer and the «downstream» effect may be seen as a potential effect of that program, «the nature of some effects inside the computer does not mean that the ‹downstream› effects caused by the data output of the computer are necessarily of a technical nature.»

When describing the potential technical effect, the EBA held that according to older case law these effects may be considered when either: (i) «the technical effect that would result from the intended use of the data could be considered ‹implied› by the claim»; or (ii) «the intended use of the data (i.e. the use in connection with a technical device) could be considered to extend across substantially the whole scope of the claimed data processing method.» Thus, a further technical effect may be implied, if the output data of the computer is technical in nature.

During the referral proceedings it was argued that virtual technical effects, meaning «technical effects which are not achieved through an interaction with physical reality, but are calculated in such a way as to correspond closely to ‹real› technical effects or physical entities» should be considered as technical effects. The EBA held that unlike virtual or calculated technical effects, potential technical effects, which «for example when a computer program or a control signal for an image display device is put to its intended use, necessarily become real technical effects.» Virtual or calculated technical effects on the other hand may reflect status information or physical properties, which reflect the physical real world, but in the end consist of mere data, which can be used in many non-technical ways (e.g. for scientific or academic purposes). The calculation | of a physical state of an object on the other hand, comprises typical methods of measurements, which are based on interaction with physical reality and therefore considered technical in nature (which also includes indirect measurements).

In its decision, the EBA included considerations of the existing case law on simulations, namely T 1227/05 and T 625/11. It held that it was not the purpose of the EBA to reassess the decisions; however, it pointed out that the cases needed to be considered in light of their specific circumstances.

The EBA particularly emphasized that: «The often-quoted criterion of T 1227/05 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 for computer-implemented simulations, since the findings of T 1227/05 were based on specific circumstances which do not apply in general.»

In its reasoning, the EBA confirms and/or clarifies disputed arguments regarding the assessment of the inventive step of computer-implemented simulations. The key points of the decision are summarized as follows:

• –
  The EBA confirms that the established approach for assessing the inventive step of computer-implemented inventions – the «COMVIK approach» – applies to computer-implemented simulations;
• –
  The EBA further confirms that a feature which is considered non-technical may contribute to the technical character of the invention, provided that the contribution is assessed in view of the whole claim;
• –
  Moreover, the EBA finds that a simulation or features of a simulation do not contribute to the technical character solely based on the fact that the simulation relies on technical principles underlying the simulated system or process;
• –
  The EBA also confirms that non-technical features of a simulation which result in a «further technical effect» (i.e., a «technical effect going beyond the simulation’s straightforward or unspecified implementation on a standard computer system») may be considered for the inventive step. Although a direct link with physical reality is in most cases sufficient to establish a technical effect, it is not a necessary condition. A further technical effect may be implied, if the output data of the computer is technical in nature.

The EBA further makes comments on decision T 1227/05, which notably limit the scope of the decision due to its reduction to an exceptional case.

Moreover, it is worth noting that the EBA confirmed the «Rote Taube» decision, in which the German Federal Court of Justice held that the term «invention» implied «a technical teaching, characterized as ‹a teaching to methodically utilize controllable natural forces to achieve a casual, perceivable result.›«; and in accordance with the earlier case law, it refrained from defining the term «technical». It is a reminder that the notion of technicality needs to remain flexible to adapt to the developments in all fields.

The EBA decided to maintain the status quo and to apply the COMVIK approach to computer-implemented inventions in all fields. As a result, only features that contribute to the technical character of the invention are considered for inventiveness. In the case of computer-implemented simulations, however, the technical effect needs to extend beyond the simulation’s straightforward or unspecified implementation on a standard computer system (i.e. «further technical effect»). Such further technical effects are typically fulfilled by effects in physical reality (e.g. on an entity in the real world). However, a direct link with physical reality is not a necessary requirement, nor is the technicality of the underlying model of the simulation.

In conclusion, decision G 1/19 results in a challenge for drafting patent applications which claim a simulation as such, as the claims need to be sufficiently limited so that the output of the simulation may only be used for technical purposes.

With regard to other fields, e.g. the patenting of artificial intelligence (hereinafter «AI»), decision G 1/19 might not have a large impact, despite the fact that AI is partially based on simulations of neural networks. However, the further-reaching impact might be that AI, which is based on computer-implemented inventions, will not be treated any differently and the COMVIK approach also applies for any computer-implemented invention.

From a more distant perspective, decision G 1/19, as the newest development in EPO case law on the COMVIK approach, might have a diverging influence on the way computer-implemented simulation applications are handled in national patent law. For countries that have not adopted the COMVIK approach, the outcome of infringement or nullity actions with regard to claims consisting of simulations as such might look very different from what results from G 1/19. A harmonization in this regard would be desirable.