Simulations Based on Technical Principles Not Sufficient for Solving a Technical Problem

In G 1/19 (Simulation) the Enlarged Board of the Boards of Appeal held that whether a computer implemented simulation of a technical system or process solves a technical problem by producing a technical effect that goes beyond the simulation’s implementation on a computer needs to be determined on a case-by-case basis.

The referral to the Enlarged Board was made from Boards of Appeal February 2019 decision T 489-14 Pedestrian simulation – Connor, and concerns an application for a computer-implemented method for simulating movement of a pedestrian crowd through a modelled environment or building structure. The main purpose of the simulation being to give feedback on the efficiency of pedestrian flows for such environments or structures. The Board of Appeal referred the following questions regarding the assessment of inventive step for computer implemented simulations:

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. [2A] 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? [2B] 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?

As previously reported, the President of the EPO submitted comments regarding the referred questions in August 2019. The President answered question 1 in the affirmative and for question 2 found it to be a sufficient condition that the simulation method reflects, at least in part, technical principles underlying the simulated system or process, in which case question 3 does not need answering.

The Enlarged Board readily admitted questions 1 and 3 as answering those questions would ensure uniform application of the law or clarify a point of law. However, as shown above, they split question 2 into questions 2A and 2B, and declined to admit question 2A, whether in relation to computer implemented simulations or more generally for computer implemented processes. They considered it is not possible to provide an exhaustive list of criteria for assessing whether a computer implemented process solves a technical problem by producing a result that goes beyond the implementation of a process on a computer. Given the removal of question 2A the Enlarged Board reworded and admitted question 2B as follows:

2B. For the assessment of whether a computer-implemented simulation claimed as such solves a technical problem, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

The Enlarged Board considered a computer implemented simulation as such to be a simulation process comprising only numerical input and output without interaction with external physical reality. The Enlarged Board noted that somewhat by design ‘technical’ is not defined in the EPC as its scope can change over time. The lack of a definition does not matter for the problem-solution approach utilised in the EPC, which focuses on how a claimed invention makes a technical contribution – whatever its field of application, rather than whether a field of activity is technical in nature. Consequently, the Enlarged Board answered question 1 in the affirmative as no group of computer-implemented inventions can be a priori excluded from patent protection and simulations can solve technical problems, even when its output has no direct link to physical reality.

In answering question 2B the Enlarged Board noted various principles that assist in delimiting technical subject matter for inventive step purposes. It noted:

• no subject matter or activity having technical character falls within the exclusions to patentability;
• non-technical features are features that on their own or as such fall within the exclusions to patentability;
• the problem to be solved must be a technical problem and only technical inventions are patentable. However, non-technical features can be taken into account in the assessment of inventive step if they contribute to the problem to be solved through their interaction with the technical subject matter of the claim;
• while the use of a computer is considered to provide technical subject matter for the purposes of patent eligibility, the use of a standard computer does not provide sufficient technical subject matter for inventive step purposes;
• a technical step within a computer-implemented process may or may not contribute to the problem solved by the invention.
• a claimed invention needs to be technical over the whole scope of the claims, not just some embodiments;
• technical effects supporting an inventive step can occur within a computer-implemented process;
• a technical effect on a physical entity is not a necessary condition in order for a claim to have technical character;
• while virtual technical effects can reflect real-world properties, it remains mere data which can be used in many different ways and would be unlikely to be technical over the whole scope of the claims unless limited to specific technical uses or functions;.
• measurement calculations about a physical object have technical character since they are based on interactions with physical reality at the outset;
• the physical system or process to be simulated is not part of the simulation and is generally available as prior art;
• depending on a claim’s wording a simulation needn’t accurately match physical reality in order to produce a technical effect that contributes to a claim’s technical character, although an undue burden objection may arise if it doesn’t;
• the simulation of a technical system requires the translation of the system into models and algorithms, which is non-technical information that will only be taken into account for assessing inventive step if it contributes to any technical effect achieved by the claimed simulation invention.

Taking account of these principles in answering question 2B the Enlarged Board held it is not a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process. In particular, the technical principles that are present may not contribute to a technical solution to the relevant technical problem that the invention claims to solve. The Enlarged Board further held that neither is it a necessary condition, since a simulated system or process based on non-technical principles cannot be categorically excluded from having technical character. Consequently it needs to be determined on a case-by-case basis.

In regards to question 3 the Enlarged Board held that the answers to the first and second questions is no different if the computer-implemented simulation is claimed as part of a design process.

Author: Quinn Miller

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