On 10th March 2021 the Enlarged Board of Appeal (EBoA) published the highly anticipated decision relating to the patentability of computer-implemented simulations.
Background of the Referral
The European patent application which resulted in this referral to the EBoA relates to a method of simulating movement of a pedestrian crowd through an environment such as a building. However the implications of this decision are seen as being widely applicable and could affect the patentability of all sorts of computer-implemented simulations at the European Patent Office.
The referring board indicated that they believe that the claimed computer-implemented simulation does not provide a technical effect. In contrast, an assessment based on an earlier decision T 1227/05, would lead to the view that the simulation does constitute a functional technical feature. Therefore, the referral seeks to answer the question of whether a computer-implemented simulation can provide a technical effect.
Questions referred to the Enlarged Board of appeal
As we discussed in a previous article, in this decision the EBoA considered the following questions:
- 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?
- 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?
- 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?
Answers to the Questions
The EBoA provided the following answers to the questions:
- 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.
- 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.
- 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.
Implications of this Decision
In answering these questions, the EBoA concluded that the COMVIK approach of assessing inventive step of computer-implemented inventions also applies to computer-implemented simulations. In the COMVIK approach only the features of a claim which contribute to the technical character of the invention are considered when assessing inventive step. Therefore, this decision means that patentability of simulations will be assessed using the same test as other computer-implemented inventions.
The EBoA explained that when the COMVIK approach is applied to simulations, the underlying models form boundaries, which may contribute to technicality if 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. According to the EBoA such further use or adaptions to the computer or its functioning must be at least implicitly specified in the claim for it to be patentable.
A negative answer to the first question would have implied that no claims to computer-implemented simulations are patentable. However, the EBoA’s answer does allow for some claims to computer-implemented simulations to be granted, provided they meet the same criteria used in evaluating other computer-implemented inventions.
The second question comprises two parts. The EBoA found that the first part was not admissible and so they did not provide a direct answer to the question of what criteria are relevant for assessing whether a computer-implemented simulation, claimed as such, solves a technical problem. Therefore, the EBoA have decided that it would not be possible to provide an exhaustive list of criteria for assessing patentability of computer-implemented simulations, but instead argue that the existing framework can and should be used for the assessment of general computer-implemented inventions. However, the second, more specific part of the question was considered.
The EBoA state that they agree with the earlier decision, T 1227/05, in which it was found that a simulation can provide a technical effect, however, only if it is understood that that in this case an intrinsically technical function was provided. Therefore, the EBoA warned against applying this finding as a generally applicable criterion for patentability of simulations. Instead, the EBoA state that calculated numerical data from a simulation usually cannot establish the technical character of an invention in accordance with the COMVIK approach and only in exceptional cases can a calculated effect be considered an implied technical effect. This may be disappointing to applicants, as this case was often cited in support of the patentability of simulations and this decision may reduce its usefulness in that regard.
In summary, this decision provides some welcome guidance on how the EPO will assess the inventive step of inventions which relate to computer-implemented simulations, thereby providing greater certainty to both patent applicants and third parties concerned with the patentability of computer-implemented simulations. The case adds further weight to the COMVIK approach being a major consideration when assessing the patentability of computer implemented inventions before the EPO.
The decision does not, however, give an exhaustive list of criteria for assessing whether computer-implemented simulations are patentable. The referring board will now consider this decision when deciding on the patentability of the patent application which resulted in this referral, providing us with an example of how this approach will work in practice.
The full decision is available from the EPO here (pdf).
 T 641/00, OJ EPO 2003, 352
This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact email@example.com or your usual Haseltine Lake Kempner advisor.