The patentability of computer simulated methods - another referral to the Enlarged Board of Appeal

The Technical Boards of Appeal (TBA) are on a roll. A couple of weeks ago, the IPKat reported on the decision of the TBA to finally refer the question of double-patenting to the Enlarged Board of Appeal (EBA) (IPKat post here). The TBA have since also referred a series of questions relating to another long-standing issue, that of the patentability (or otherwise) of computer implemented inventions.

Legal Background

Article 52 EPC specifies that methods for performing mental acts and computer programs are not considered inventions.  They are excluded from patentability in so far as a claim relates to excluded subject matter "as such". Therefore, a claim directed to a computer implemented invention is considered patentable insofar as the claim causes "a further technical effect" (T 1173/97, Computer program product/IBM, Headnote). The question of the patentability of the claims is then shifted from an analysis of whether the claim is directed to excluded subject matter, to one of whether the claimed technical feature is novel and inventive (as established in T 154/04).

The EBA have previously considered a referral from the EPO President on the subject of computer implemented inventions (G 3/08Programs for computers). Under Article 112(1)(b) EPC the EPO President may refer a question to the EBA where two Boards of Appeal have given different decisions on that question. The President at the time was Alison Brimelow. The EBA declined to hand down a decision, ruling that the President's referral was inadmissible because the EBA found no divergence in the Boards of Appeal case law justifying the referral (Headnote 7) (IPKat post here).

In G 3/08 the EBA nonetheless reiterated the previous view of the TBA in T 1173/97, Computer program product/IBMthat computer implemented inventions are patenable insofar as they claim "a further technical effect". This approach has been followed by subsequent TBAs and is outlined in the EPO Guidelines for Examination 2018. The Guidelines also provides examples of what is considered a "further technical effects". Programs for processing code at low level, such as builders or compilers, for example, "may well have a technical character".

An assessment of the patentability of a computer implemented invention is therefore dependent on a separation of the "technical" and "non-technical" features of the claim. However, making the distinction between the technical and non-technical features is not always straightforward, given the potentially complex interaction between such features.

The recent referral - T 0489/14

The TBA decision (T 0489/14) was an appeal of a decision by the Examining Division refusing application EP 03793825.5 on the grounds of lack of inventive step (Article 56 EPC).

The application provides a mathematical model and algorithm for simulating the movement of individual pedestrians through an environment. The simulation can be used to aid the design of busy environments such as railway stations. The application further describes a system for performing the simulation as a component of the architectural design of such an environment, i.e. to aid in the positioning of entrances and exits.

Predictable crowd movement?
Claim 1 of the Main Request of the Appeal specified a series of steps for performing the simulation. The TBA considered that these steps could be carried out exclusively mentally, at least in principle. Without the computer implemented feature, the TBA concluded that the claims would therefore have referred to methods for performing mental acts as such. Methods for performing mental acts are also considered non-inventions in so far as a claim relates to them as such (Article 52 EPC) (r. 4).
The TBA noted however that the claim included a technical feature, in the form of the requirement that the method was performed on the computer. The Article 52 EPC exclusion was thus straightforwardly overcome, and the objection shifted to one of lack of inventive step (Article 56 EPC). The assessment of inventive step under Article 56 EPC should be based only on the technical features of the claim. Consequently, if the only technical feature found in the claim is the implementation of the method on a computer "the conclusion would be that the method lacks inventive step over a known general-purpose computer" (r. 8).

The TBA observed that, in their 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." The TBA did not consider modelling the movement of pedestrians as having any such technical effect. On a first analysis, it therefore appeared to the TBA that the claimed method did not bring about a technical effect in any way different from using a computer to perform any other type of calculation (r. 11).

As a counter, the appellant cited T 1227/05. In T 1227/05, the TBA found that the numerical simulation of a noise-affected circuit was a functional technical feature. The simulation method claimed in T 1227/05 could be used to predict the performance of a designed circuit in the presence of noise before it was built. The TBA in T 1227/05 thus found the method technical. Inventive step was found on the basis of the improved speed of the method provided by computer implementation. The appellant in T 0489/14 argued that the method of T 1227/05 was analogous to the case in question. Particularly, the simulation of pedestrians could be used to predict the movement of pedestrians in a designed environment that was yet to be constructed. Similarly, the appellant argued, inventiveness was conferred by the improved performance of the algorithm when implemented on the computer.

The TBA agreed that T 1227/05 supported the appellant's case. However, the TBA disagreed with the reasoning of T 1227/05. First, the TBA considered that although the simulation may assist in the design of a physical environment, "the cognitive process of theoretically verifying its design appears to be fundamentally non-technical" (r. 15). Second, the TBA argued that the computer implementation of any algorithm necessarily increases the speed at which the algorithm can be performed. However, this does not provide a technical effect beyond that provided by the computer implementation (r. 15).

Referral to the EBA 

The TBA observed that industrial simulation methods are gaining ever more economic significance. However, the TBA was "yet hesitant to base its decision on policy considerations relating to the appropriate scope of patent protection that have not been expressed by the legislator". The TBA further noted that their own view as regards to the inventiveness of the claims in question was at odds with the decision in T 1227/05, the EPO case law subsequent to T 1227/05 and the EPO Guidelines for Examination 2018. The TBA further noted that the question to be determined, namely the interpretation of Articles 52(2) and (3) and 56 EPC could not be answered directly and unambiguously by reference to the EPC. The TBA conclude the case in question "requires a decision to be taken on - to put it in general terms for now - the patentability of simulation methods".
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?
 IPKat will await the outcome of the referral with interest.
The patentability of computer simulated methods - another referral to the Enlarged Board of Appeal The patentability of computer simulated methods - another referral to the Enlarged Board of Appeal Reviewed by Rose Hughes on Friday, March 22, 2019 Rating: 5

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