More Work for the Enlarged Board of Appeal – Article 3 Simulated Patentability

By Andrew Sunderland, Senior Associate

Our third and final article in this series looks at the patentability of simulations.

Under the European Patent Convention, subject matter relating to performing mental acts or to programs for computers is excluded from patentability. Simulations, depending in-part on how they are claimed, may or may not fall within one or both of these categories.

Case law in this field gives some more direction on how claims should be assessed for patentability and indicates that simulations can, in some circumstances, contribute to a further technical effect. This is important for demonstrating that there has been an inventive step, which is one of the criteria for patentability.

In this referral, the Technical Board of Appeal would like more guidance on how to assess inventive step for claims directed to a computer-implemented simulation, when claimed as such or when claimed as part of a design process.

To that end, the following questions have been referred to the Enlarged Board of Appeal (EBA) (G1/19 – referral from T 0489/14):

  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 first question is attempting to establish whether a simulation, by itself, can be seen as technical in nature. A computer-implemented simulation is normally deemed technical in Europe by virtue of its computer implementation. However, the question here is whether the simulation itself can have a technical effect once that implementation is removed from consideration. In this case the simulation is based on real-world limitations (simulating a building and the movement of people through that building).

If the EBA deems that a simulation, when taken in isolation, can have a technical effect, then the next question becomes; how can an examiner at the EPO reliably and repeatably assess patentability in such cases. This question is essentially asking for a test or checklist, based on which an Examiner can make an assessment.

The third question alters the criteria slightly, in that the Technical Board is asking whether the same subject matter, if claimed as part of a design process, could be patentable. Presumably if the answer to the first question is yes, then the answer to this question would also be yes. But a design process may imply a product, and verifying a design implies limitations to the simulation that may have real-world implications.