European Union: Patenting Simulation Methods In Europe: The Hearing Of The Enlarged Board On G 1/19 Held On 15 July 2020

Computer simulations are widely used in the development of new products. Often simulations can have significant real world impact - much of the response to the ongoing coronavirus pandemic for example has been driven by detailed simulations of the impact on transmission rates of differing policy approaches. As with other software-based innovation however, patent claims directed to methods of simulation, design or modelling generally comprise features which in Europe are considered to fall under the category of mathematical methods.

A pending case (G 1/19) relating to computer implemented simulation has been referred to the Enlarged Board of Appeal. The case is relevant to the patenting of simulations in particular, but is potentially also relevant to the patenting of software more generally. A hearing was held for G 1/19 on 15 July 2020. The background to this case, together with an overview of the hearing, is presented below.

The EPO approach to software inventions

To understand the EPO approach to computer software, it is important to understand the origin of the objections that can be raised. In the European Patent Convention (EPC), Article 52 sets out that:

The EPO is not a party to the TRIPS agreement and is not bound by it. However, in a landmark decision T 1173/97, the EPO Boards of Appeal stated that the TRIPS agreement should be taken into consideration since "it gives a clear indication of current trends". The TRIPS agreement states that "patents shall be available for any inventions, whether products or processes, in all fields of technology". To address a potential conflict between Article 52 EPC and the TRIPS agreement, the EPO Boards of Appeal in T 1173/97 decided that:

This decision set the EPO on the path which it still follows today: that the determination of the technical effect is key to obtaining grant of patents relating to software inventions at the EPO.

In parallel to the EPO developing their case law on the need for a "technical effect", the EPO developed a test for determining inventive step regardless of the field of technology. This test is termed the Problem-Solution approach. The steps are:

• determine the "closest prior art";
• establish the "objective technical problem" to be solved; and
• consider whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

In the Hitatchi decision T 258/03, the EPO Boards of Appeal determined the presence of a "technical effect" within the problem-solution framework. Specifically, if the invention provides a solution to an objective technical problem, then there is a technical effect. Thus, at the EPO, the determination of whether the invention has technical character is now considered under inventive step. The EPO do not normally refuse applications in the software field as being excluded from patent protection under Article 52 EPC. However, the EPO will often refuse such applications as lacking inventive step, since they are considered not to address an objective technical problem.

Background to G 1/19

The case (G 1/19) concerns European Patent Application No. 03793825.5 ("Simulation of the movement of an autonomous entity through an environment"). A brief timeline of the application is as follows:

• PCT application filed – 09 Sep 2003
• Regional Phase Entry in Europe – 24 Mar 2005
• 3^rd party observations concerning novelty – 15 Nov 2011
• Oral Proceedings of Examining Division – 30 Apr 2013
• Decision to refuse application – 26 Aug 2013
• Notice of Appeal filed – 4 Nov 2013
• Oral Proceedings of Board of Appeal – 11 Apr 2018
• Referral to the Enlarged Board of Appeal – 22 Feb 2019

The Enlarged Board of Appeal of the EPO ensures uniform application of the European Patent Convention. It decides on fundamental points of law when, for example, case law has become inconsistent or an important point of law has arisen. Referrals to the Enlarged Board may be made by the Boards of Appeal or by the President of the European Patent Office

Very few cases are referred to the Enlarged Board of Appeal. G 1/19 is particularly important since the only previous referral to the Enlarged Board relating directly to patentability of software was G 3/08, a referral by the President due to alleged inconsistencies in the case law. In G 3/08, the Enlarged Board issued a decision on 12 May 2010 that it did not agree that there were inconsistencies and therefore the referral was inadmissible. Thus, G 1/19 may be the first admissible software case on which the Enlarged Board provides a decision.

Turning to the details of the case, G 1/19 concerns a computer-implemented method of modelling pedestrian crowd movement in an environment that includes the simulating of movement of a plurality of pedestrians through the environment.

The appellant submitted that the invention produced a technical effect in the form of "a more accurate simulation of crowd movement". As to the technicality of simulating crowd movement, the appellant argued that simulating the movement of pedestrians yielded results which were no different from those obtained by modelling an electron using numerical methods.

The Board of Appeal was not convinced that numerically calculating the trajectory of an object as determined by the laws of physics is in itself a technical task producing a technical effect. In the Board of Appeal's view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity.

However, the EPO Guidelines for Examination refer to an important case (T 1227/05) where the Board of Appeal allowed a claim to a numerical simulation of a noise affected circuit.

The potential inconsistency with T 1227/05 led the Board of Appeal to refer the following specific questions to the Enlarged Board:

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?

Submissions in advance of the hearing of the Enlarged Board on G 1/19

More than 20 amicus curiae briefs were submitted by interested parties (including AIPPI, FICPI, EPI, CIPA and others) in advance of the hearing. Furthermore, and unusually, the President of the EPO has also submitted comments in response to the questions raised in G 1/19.

The Enlarged Board of Appeal issued a communication on 22 June 2020 in advance of the oral proceedings, raising a number of specific questions for discussion during the hearing. These questions for discussion are summarised below:

1. Is the EPO approach for assessing software related inventions generally referred to as "COMVIK case law" suitable for the examination of computer-implemented simulations?
2. To what extent can potential or virtual technical effects be treated like "real" technical effects?
3. What are the differences between simulations on the one hand and the "non-inventions" listed in Article 52 EPC (such as schemes, rules and methods for performing mental acts, as well as discoveries, scientific theories and mathematical methods) on the other hand?
4. To what extent can purposes of a simulation be considered for the assessment of inventive step if such purposes are not reflected in the claim?
5. Does it matter whether the simulated system or process is technical or whether the simulated system or process is based, in part or entirely, on human behaviour or on natural phenomena?

The hearing of the Enlarged Board on G 1/19 held on 15 July 2020

The hearing of the Enlarged Board on G 1/19 was held on 15 July 2020. Members of the public were able to live stream the proceedings, due to the restrictions on public attendance of the hearing in light of the COVID-19 pandemic. Representatives of the appellant and representatives of the President of the EPO made submissions during the hearing.

The admissibility of the questions 1 to 3 referred to the Enlarged Board was considered initially. In particular, it was queried to what extent an answer to Question 2 was needed for the referring Appeal Board to take its decision in the pending appeal case. Admissibility of the first part of Question 2, namely "what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem?", was discussed at length.

The referred questions 1 to 3 were then considered in order. The submissions concerning Question 1 were the most extensive, with some of these submissions also being referred to during the discussion of the later questions.

As regards Question 1, the meaning of a computer-implemented simulation "as such" was discussed. The questions i) to v) posed by the Enlarged Board in their communication of 22 June 2020 (and summarised in the section above) were then considered. On question i), the appellant and the representatives of the President both made submissions that the "COMVIK case law" was suitable for the examination of computer-implemented simulations. During the discussion of potential and virtual technical effects in relation to question ii), various hypothetical examples were put forward by the representatives of the President, including that of a virtual wind tunnel, in which a virtual technical effect could solve the same technical problem as a real technical effect. On question iii), the appellant and the representatives of the President also both put forward submissions that a feature relating to a "non-invention" (such as a mental act) can still contribute to technical character in the context of a claim to a solution to a technical problem. Concerning question iv), and consideration of the purpose of the simulation, the appellant raised an intermediate example, lying between the case where a claim specifies simulation of an undefined "technical system" and the case where a claim specifies a very specific technical purpose (for example, simulation of a circuit subject to 1/f noise, as specified in T 1227/05). In relation to question v), it was submitted by the appellant that in the present case, the simulation of human behaviour is used to control a technical system, in particular the simulation can be used to improve the building structure. The representatives of the President also put forward the view that a technical contribution could still be present in certain circumstances, even where the simulation models human behaviour. Simulations used in the field of self-driving cars were put forward as an example here.

In relation to the referred Question 2, it was set forth by the Enlarged Board in their communication of 22 June 2020 that the process or system to be simulated may be argued to be part of the prior art, and that the gist of the invention should therefore lie in the simulation. The technical considerations needed in order to arrive at a computer-implemented simulation would be more relevant if they referred to the simulation and its implementation, rather than to the simulated system or process. Both parties provided submissions on this point, with the appellant coincidentally using a hypothetical example relating to a virtual wind tunnel simulation as well.

On referred Question 3, the representatives of the President considered the example where the simulation concerns the behaviour of a technical system, but derivation of technical information is left to the user. They submitted that such a claim could be made patentable by adding a step of computing the technical information, or alternatively by embedding it as part of a method of designing. The President's arguments were illustrated by some interesting hypotheticals, which while entirely consistent with the present requirement for functional technical features, showed how non-technical and technical features could combine in an inventive manner.

Although preliminary views were voiced by the Chairman of the Enlarged Board, no final decision was taken during the hearing. The Chairman concluded the hearing by stating that the minutes of the hearing and the decision will be published "as soon as possible".

Summary

Once issued, the decision in G 1/19 may have a significant impact not just on patenting of simulations but also on the patenting of software at the EPO more generally, depending on the response and reasoning of the Enlarged Board. Encouragingly, the EPO President's response to the questions are in favour of maintaining the patentability of simulations without, for example, requiring a direct link with physical reality, and expressed the view that it is sufficient the simulation method reflects, at least in part, technical principles underlying the simulated system or process. However, the Enlarged Board is not bound in any way by the President's comments and will reach its own conclusions.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.