Oral proceedings before the Enlarged Board of Appeal in case G1/19

Oral Proceedings public by livestream
On 15 July 2020, the Enlarged Board of Appeal held oral proceedings in case G1/19, relating to the patentability of computer-implemented methods involving simulations.

In view of the measures against the coronavirus that are currently in place, only the people directly involved were admitted into the oral proceedings room. A livestream was made available to ensure that the oral proceedings were public anyway. This livestream appears to have fulfilled a need, as about 1600 people registered in order to get access. In addition, EPO-staff could watch the oral proceeding though an internal tv channel. The livestream offered an excellent opportunity to see how oral proceedings at the Enlarged Board go for those of us who did not experience this before. They are indeed somewhat different from oral proceedings in first instance and before a Technical Board of Appeal, and I found it nice to see this in a real life case without having to travel to Munich.

Importance of the case
In my opinion, G1/19 has the potential to become a highly important landmark decision for computer-implemented inventions in general. When I heard the arguments go back and forth during the oral proceedings, it occurred to me that this is not just a case about simulations. The issues underlying the questions and arguments go much deeper, maybe even to a philosophical level, marking a transition from “real-world technology” to “virtual-world technology”.

Question 1 of the referral addresses the issue of whether a 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?

I noted that in the discussion the focus appeared to be on the part relating to “the computer-implemented simulation claimed as such” of question 1 of the referral. The Enlarged Board indicated that they interpret the “as such” to mean that here is only numerical input and output, and no relation to the physical world.

In a Communication preceding the oral proceedings, the Enlarged Board asked the question to what extent potential or virtual technical effects can be treated like “real” technical effects (i.e. technical effects in the physical reality). If the Enlarged Board in their decision would indicate that virtual and real technical effects should be treated in an equal way for the assessment of inventive step, then this would in my opinion be a significant step in the patentability of non-tangible inventions.

It is a question whether the Enlarged Board will take such a step, as it would most likely mean that the criteria with respect to the technical character of computer-implemented inventions will become less strict. However, on the other hand the question is also whether the EPO can afford to not take such a step.

As both the applicant/appellant and the representatives of the President pointed out during the oral proceedings, a computer-implemented simulation tool is in many technical fields the modern replacement of laboratory experiments. For those “old fashioned” methods of experimentation in the physical world, there is no discussion at all as to whether they have sufficient technical character to be patentable. So why would technical character, and therewith patentability, be denied for their modern day replacements, which produce a similar kind of output: information about a technical system or process?

While G1/19 specifically relates to methods involving computer-implemented simulations, similar situations arise in other fields of computer-implemented inventions. We live more and more in a virtual world, and with the current situation in view of the corona virus, this already ongoing process of virtualisation is even accelerated significantly. Will our European patent system be able to keep up with this transition while at the same time safeguard the careful balance in the EPC between what is patentable and what is not? In the documents relating to the Revision Conference of the EPC, we read that it was decided not to incorporate a definition of the word “technical”, as this might inhibit the patentability of future, at that point in time unforeseeable, technologies. It appears that we now are indeed at such a point.

I hope that the decision in G1/19 will reflect this point made in the Revision Conference, and that the decision in G1/19 will provide us with insights as to how the EPC should be applied in order to keep up with modern technologies, so that the European patent system continues to act as a catalyst and not an inhibitor for technological development.

Clarifications are desired
The discussions in the oral proceedings in G1/19 before the Enlarged Board of Appeal of 15 July 2020 made clear that there is a serious need for clarification with respect to the patentability of computer-implemented inventions, in particular computer-implemented simulations. Technical Boards of Appeal may write beautiful phrases like “functional technical feature” or “an adequately defined class of technical systems”, but the field would welcome more specific guidance to work with in daily practice.

Hopefully the Enlarge Board will give us new insights, clarifications and explanations, and the grey area of computer-implemented inventions will become a little less grey after the decision in G1/19 is published.

Nyske Blokhuis (NL)
Dutch and European Patent Attorney, Associate Partner at EP&C