EBA decision G 1/19 - computer-implemented simulations

The Enlarged Board of Appeal of the EPO published its decision G 1/19 on computer-implemented simulations on 1 March 2021. The Enlarged Board of Appeal considered that computer invented simulations must be assessed according to the same criteria as any other computer-implemented invention.

A detailed report of the decision can be found in the article “G 1/19 released” in epi Information 1/21.

The Enlarged Board rejected the Board’s view in the referral decision T 0489/14 that a technical effect provided by a simulation requires, at a minimum, a direct link with physical reality. G 1/19 states that it is not decisive whether the simulated or designed system or process is technical or not. Rather, it is relevant whether the simulation or design process as part of the claimed invention contributes to the solution of a technical problem. This question must be answered using the same criteria as for any other computer-implemented invention.

Broadly the EPO approach to assessing computer-implemented inventions is that even if computer programs are excluded from patentability under Art. 52(2)(c) and (3) EPC if claimed as such, the exclusion does not apply to computer programs producing a “further technical effect” that goes beyond expected physical effects such as circulation of electrons in the computer (T 1173/97). The use of a computer in the claimed subject-matter also makes it eligible for patent protection under Art. 52(2)(c) and (3) EPC. If the eligibility criteria is met, inventive step is assessed based on the Comvik approach (T 641/00), i.e., by taking into consideration all the recited features that contribute to the technical character of the invention. This may include features that are non-technical when taken in isolation, such as mathematical formulae. Features making no technical contribution cannot support the presence of inventive step.

Traditionally, when drafting applications for computer-implemented simulations, patent attorneys were happy to rely on decision T 1227/05. This case concerned a simulation of an electronic circuit subject to 1/f noise. It was considered that the simulation constituted an adequately defined technical purpose for a computer-implemented method, provided that the method was functionally limited to that purpose. A technical effect was acknowledged for the simulation even though the claimed invention did not incorporate the physical end product.

The referral and Decision in G 1/19 originated from an application related to a computer implemented simulation of the movement of a pedestrian crowd through, for example, a modelled building – such a simulation may be useful when designing the building structure. The examining division considered that only the use of a computer contributed to the technical character of the recited method. Based on this, the solution was of course obvious. The Board of Appeal view was that 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. As this would diverge from T 1227/05, the Board referred a number of questions to the Enlarged Board of Appeal.

The decision issued by the Enlarged Board confirmed that the Comvik approach is suitable for the assessment of computer-implemented simulations. Simulations are not treated differently from any computer implemented invention and can comprise patentable subject matter.

The Enlarged Board responded to the reformulated questions as follows:

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? YES

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? NO

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 ANSWERS ARE THE SAME