The long-awaited decision from the Enlarged Board of Appeal (EBA), G1/19, provides further clarity in the always contentious field of computer-implemented inventions (CIIs). In particular, it addresses the question on whether the assessment of inventive step is different if the invention is directed to a computer-implemented (CI) simulation of a physical system.

Background

At the EPO, the patent eligibility of CIIs is integrally linked to the assessment of inventive step. Under the so-called ‘COMVIK’ approach, only technical features are used to support the presence of inventive step, albeit that non-technical features of a claim may appear in the formulation of the problem to be solved. Consequently, whilst a computer would be considered in itself to be ‘technical’, since computers are known, claims require further technical features beyond this to be patentable. An invention must therefore produce a further technical effect - one that goes above and beyond the "normal" physical interactions between the software and the hardware on which it is run. For example, software controlling a technical process outside of the computer, such as the operation of a machine, would be likely be considered to have the required technical character. However, existing EPO case law was less clear on scenarios where processes are performed within a simulated environment; does the COMVIK approach still apply here?

The patentability of CI simulations is significant because computer modelling is an increasingly important part of modern design processes. For instance, modelling allows embedded system designers to quickly test new hardware implementations at their desks and allows architects to see how a crowd would move through a building without constructing it first. G1/19 concerns the latter of these scenarios and addresses the question of whether a CI simulation of a technical system can in itself produce a technical effect.

Decision

The EBA issued a lengthy decision, providing a comprehensive summary of the case law and the prevailing issues. The EBA began by defining a simulation as comprising a numerical model (of a system or process), equations which represent the behaviour of the numerical model and algorithms that govern those equations to provide a numerical output.

A simulation, by its very nature, does not possess a physical interaction with a simulated system or process. The result of a CI simulation can only amount to a virtual technical effect. This is in contrast to a non-simulated system or process which may output, for instance, a physical measurement. Notably, there may be certain simulations which are designed to test scenarios that would never occur in reality.

Applying the COMVIK approach to simulations, the EBA concluded that the decisive factor is not whether the simulated system under consideration is a technical system or not, but rather whether the claim as a whole solves a technical problem.

Implications

Importantly, the EBA has confirmed that the COMVIK approach should be used for all types of CIIs, including CI simulations, and that a CI simulation need not be directly linked to physical reality to confer a further technical effect. That is, the technical effect may occur within the computer-implemented process itself, as well as in the form of an input or output of that process.

This decision also limits the significance of the earlier Technical Board of Appeal Decision T1227/05 which had previously been interpreted as inferring that all simulations modelling a technical system inherently would have technical character. The EBA have confirmed this is not a generally applicable criterion and determination will be on a case-by-case basis.  

The decision also provides useful guidance on the claiming of output data. Here, the EBA has confirmed that an “implied” technical effect may be achieved provided the data output from a process is specifically adapted for the purposes of its intended technical use.