10th October, 2019
Case G 1/19, being based on T 0489/14, broadly relates to computer-implemented simulations of systems and processes and the technicality of such simulations. T 0489/14 is an appeal against the refusal of European patent application No. 03793825.5, with claims directed to a computer-implemented simulation of an agent moving through an environment as well as to a method of designing a building comprising such a simulation step.
The Examining Division refused the application on the ground of lack of inventive step, basically owing to a finding of lack of technical character of the simulation step.
The Board of Appeal acknowledged the existence of previous case law (such as T 1227/05) finding that simulations of technical systems can have technical character. At the same time, the Board of Appeal expressed doubts about this and came to the conclusion that it was inclined to go against this previous jurisprudence in the present case.
The following questions were referred to the Enlarged Board of Appeal:
- 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?
In FICPI’s view, one important question is whether an effect of a claimed solution must relate to the real world in order to have a technical effect and therefore contribute to the technical character of the solution?
Another important question seems to be whether the “simulation” as such is a technical or a non-technical building-block. Phrased differently, does the simulation cause a “further technical effect” in the sense of T 1173/97 or G 3/08 reason 10?
From FICPI’s point of view, the predictability of the European patent system is important. The system should also be fit for purpose in the sense that inventors coming up with novel, inventive and industrially applicable solutions in any field of technology can benefit from the rights conferred by a European patent covering such solutions.
At the same time, according to the EPC, the current position at least is that European patents should not be granted for solutions that are not “technical”. Hence the question at the heart of the referral is what is to be considered “technical”.
Given the fact that normal engineering work today consists in relatively large part of work in or with virtual systems or environments, with varying degrees of connection to the real world, it seems artificial to draw this line where there is no longer any direct connection to the physical world. Put differently, from the point of view of the engineer, it would be counter-intuitive to disqualify a method from patentability merely because it is directed to or comprises a simulation that as such has no direct connection to the physical world.
For computer simulations, an eventual physical manifestation may occur in the form of a direct input to a production process; or an early warning in a surveillance system. In other cases, a simulation step may be used merely as one among several interacting building blocks, such as in a feedback loop for finding the optimal solution to a particular problem.
On the other hand, simulations may also be used in clearly non-technical contexts, such as when actually being performed purely in the mind of a human being or when part of an otherwise non-technical context. For instance, a simulation of monetary results in a financial decision tree analysis would probably not be technical.
Having said this, in FICPI’s view the decisive question when determining whether a simulation contributes to the technical character of a claim or not should not be whether the concept of “simulation” as such is technical, but rather what is the context of the actual simulation and what the simulation contributes in the context in question. If a sufficiently well-defined simulation step contributes to a reproducible and useful technical effect in the particular context in which it is claimed, the simulation step should be considered to be a technical feature. This determination should not be made solely on the basis of whether the simulation step itself or the claim has any direct connection to the real world or if it could theoretically be performed in the mind of a human being.
One rationale behind this view is that one may view simulation as a tool just like any other that is available to the technically skilled person. As in the case of a hammer, which may be used to drive a nail into a wooden plank or as a part of an artist’s installation, a simulation may be used for both technical and non-technical purposes.
2. Recommended answers to the referred questions
a) Question 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? - YES
b) Question 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?
The relevant criteria relate to the context in which the simulation step is claimed, in particular with respect to the technicality of the effect actually achieved by the simulation step in that context.
A technical effect may be achieved when the simulation is based at least in part on technical principles underlying the simulated system or process. However, such underlying principles may as such also be non-technical, as long as the simulation step considered as such brings about a technical effect in the relevant context. For instance, the use of a simplified model of a human pedestrian moving through a crowd and performing a simulation using such a model to determine the aggregate behaviour of a crowd of such pedestrians in a particular environment may not be based on underlying principles that are technical as such (since the behaviour of the agents only make technical sense when viewed on an aggregate, statistical level). However, such a simulation step may still make a technical contribution in the particular context (such as in relation to the designing of a building) in which the crowd analysis is applied.
Hence, it is not a necessary condition that the simulation should be based, at least in part, on technical principles underlying the simulated system or process.
c) Question 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 answers to the first and second questions would be the same. It would be necessary to analyze the context of the design process in question.