March 19, 2021
On March 10, in decision G1/19, the European Patent Office (EPO) Enlarged Board of Appeal held that computer-implemented simulations are not per se unpatentable and warrant the same treatment as other computer-implemented inventions. Like other computer-implemented inventions, simulations may be patentable if an inventive step is based on features contributing to the technical character of the claimed simulation.
The application at issue, European patent application 03793825.5, relates to simulation of a pedestrian’s movements in an environment. According to the application, while prior art approaches modeled crowds from a macroscopic perspective, the subject application took a more granular approach, modeling multiple individual pedestrians having, e.g., individual intentions, preferred walking speeds, step lengths, and even preferred clearance tolerance or personal space. Simulating the movement of pedestrians in this manner, as described in the application, may be used to verify whether a building design meets certain requirements, for example, in case of evacuation. The claims recited, in part, a method of simulating movement of an autonomous entity through an environment. The claims as filed did not recite specific inputs or outputs rooted in physical parameters. Originally filed claim 1 recited, in part:
providing a provisional path through a model of the environment from a current location to an intended destination;
providing a profile for said autonomous entity;
determining a preferred step towards said intended destination . . . ;
determining a personal space . . . [and] determining whether said preferred step is feasible by considering whether obstructions infringe said personal space.
The examining division refused the application for lacking inventive step and held that only the use of a computer contributed to the technical character of the claimed simulation method. The applicant appealed this refusal to the Technical Board of Appeal, which in turn, referred three questions to the Enlarged Board of Appeal. These questions form the basis of the G1/19 decision:
In its analysis the Enlarged Board referenced the established two-hurdle approach for determining the technicality of computer-implemented inventions. The first hurdle pertains to eligibility under Article 52 of the European Patent Code. To overcome the first hurdle an invention must be “technical,” which may merely involve the use of a computer in the claim. The second hurdle pertains to inventive step under Article 56 of the EPC and focuses on differences between the prior art and claimed subject matter. In what is referred to as the COMVIK approach, established in the COMVIK case, non-technical features (i.e., excluded subject matter) in a claim may not contribute to inventive step. That is, a feature is only considered for inventive step if, and to the extent, it contributes to the technical character of the claimed subject matter. The COMVIK approach is employed in assessing the patentability of computer-related inventions.
The Enlarged Board held that the COMVIK approach, which applies to computer-related inventions, also applies to the assessment of computer-implemented simulations. Accordingly, computer-implemented simulations may be patentable if an inventive step can be based on a feature contributing to the technical character of the claimed simulation. In favorable language, the Enlarged Board noted that “no group of computer-implemented inventions can a priori be excluded from patent protection.”
In reaching its decision, the Enlarged Board noted various components commonly at play in computer-implemented simulations, such as underlying models and algorithms, and how such components may relate to technical features. Depending on whether models and algorithms contribute to any technical effect, they may or may not be taken into account in the inventive step assessment. Underlying models may contribute to technicality if, for example, they are a reason for adapting the computer or its functioning or if they form a further technical use of the outcomes of the simulation such as an impact on physical reality. Similarly, algorithms may contribute to the technicality if adapted to the internal functioning of a computer or if there are real-world external effects.
Notably, the Enlarged Board held that a simulation need not have a direct link with physical reality to establish technicality. However, it noted that in most cases such a direct link with physical reality is sufficient to establish technicality. Further, while the Enlarged Board noted that simulations may have few technical effects regarding the inputs and outputs, it suggested that technical improvements to simulations, such as improved accuracy, may be taken into consideration for inventive step.
In view of the above, the Enlarged Board answered each referred question as follows:
Parts of the EPO’s G1/19 decision seem to echo U.S. practice. For example, in its October 2019 Revised Patent Subject Matter Eligibility Guidance, the USPTO outlined a two-pronged approach for determining whether a claim is directed to a judicial exception. The first prong involves evaluating whether the claim recites a judicial exception and the second prong involves a practical application of the judicial exception. The EPO’s “technicality” requirements appear to be similar to the USPTO’s discussion of a “practical application.” In the U.S., for example, relevant considerations for evaluating whether additional elements integrate a judicial exception into a practical application are whether elements improve the functioning of a computer or other technology or implement the judicial exception with a machine or transform a particular article (MPEP 2106.04). Although the USPTO does not require some link with physical reality or an impact on the functioning of the computer or other technology, such features may place the claim in a strong position for patentability. This aspect of U.S. practice appears similar to the standard under the Enlarged Board’s decision.
Guidance from the USPTO suggests that computer-implemented simulations are not excluded from patentability. In the Subject Matter Eligibility Examples issued by the USPTO on January 7, 2019, Example 38 relates to a computer-implemented simulation. In this example, the USPTO contemplates the possible patentability of simulations. The claim presented in Example 38 is a method of providing a digital computer simulation of an analog audio mixer. The analysis of this claim notes that the claim would be eligible because the steps do not recite any judicial exceptions such as mathematical concepts, mental processes, or methods of organizing human activity.
The EPO’s G1/19 decision may leave the door open for pursuing computer-related simulations in the EPO. This decision lays out the framework for assessing patentability of such simulations. Accordingly, careful drafting of the application and enumeration of the technical problem and solution may help to highlight the technical effects that are likely to contribute to patentability. We encourage U.S. clients concerned with the patentability of computer simulation in the EPO to contact us for assistance in working with EPO counsel on these questions.
For more information on this holding, please contact Fitch Even attorneys Amanda Lowerre-O’Donnell or Jacqueline L. Thompson, authors of this alert.
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