Insights: Patentability of simulations – hearing for G1/19 before Enlarged Board of Appeal

The patentability of inventions involving computer-implemented simulations at the EPO has been under scrutiny recently, with three questions on this issue having been referred to the EPO’s Enlarged Board of Appeal (EBoA). This seems to be one of the big patent issues for the EPO to decide upon this year. The EBoA held oral proceedings yesterday to discuss this matter, and although a final decision has not yet been issued, there do seem to be some interesting insights that can be gleaned at this stage and we are optimistic that such inventions will continue to be patentable and that legal certainty will be restored in the next couple of months.

As discussed in our previous bulletin, in decision T0489/14 from February 2019, the EPO Board of Appeal referred three questions, as referral G1/19, to the EBoA regarding the patentability of inventions involving computer-implemented simulations. The Board in T0489/14 made this referral as they appeared to disagree with the more established approach set out in T1227/05 for assessing patentability of simulations, and they also seemed minded that further criteria for patentability were necessary. Yesterday’s hearing follows a short communication issued by the EBoA in June outlining some of their thinking along with a number of points that they wished for the parties to consider. The parties consisted of the appellant in T0489/14 and the President of the EPO, and yesterday their representatives had a chance to put forward their submissions in person in Munich, in a socially distanced EBoA hearing. The hearing was also “attended”, via a web-stream, by over 1600 other persons (including the authors of this bulletin) – this web-stream being a first for an EBoA hearing at the EPO.

To set the scene, and as a brief reminder for those that have been following this referral, the questions referred to the EBoA were:

(Q1) 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?

(Q2) 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?

(Q3) 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?

Admissibility
The discussion started, of course, with the admissibility of the questions themselves – the EBoA will only consider questions aimed at ensuring uniform application of the law, or to answer a point of law of fundamental importance. The position of both the appellant and the President of the EPO seems clear in that they both consider all of the questions admissible. The EBoA was somewhat more circumspect and whilst the tone of the EBoA suggested that Q1 and Q3 will be considered admissible, the status of Q2 is not as clear cut.

The EBoA themselves divided Q2 into a part (a), the first sentence, and a part (b), the second sentence. Whilst the EBoA seemed happy with the admissibility of Q2(b), they did suggest that Q2(a) as currently worded may be broader than is necessary for the Board of Appeal in T0489/14 to make a determination of their case. The EBoA was keen to point towards the Case Law allowing them to re-draft questions if necessary, so we might expect Q2(a) either not to be admitted or, perhaps, admitted in a reworded form. A decision on admissibility, however, was not made yesterday and it seems will be notified in the final written decision issued in future.

Question Q1
Moving on to the substance of the questions themselves, there seemed to be little separating the appellant and the President of the EPO, both of which took Q1 to be answered in the affirmative. The preliminary indication given during the hearing by the EBoA was that they also shared this view. If their final decision reflects this, then this would be welcome news for patentees in this area.

Question Q2
Perhaps unsurprisingly in view of their discussion of admissibility, the EBoA did not provide much of a preliminary view on Q2(a), instead preferring to focus on Q2(b). Here the EBoA’s preliminary view was that this question should be answered in the negative. This was in contrast to both the position of the appellant and that of the President of the EPO, both of which came down on the side of a positive reply. Both parties presented extensive and thoughtful contributions to the discussion on Q2 as a whole. These took in not just arguments on the value that simulations provide in the modern world and their near ubiquity in many fast developing fields of technology, but also attempts to look behind the wording of the relevant provisions of the European Patent Convention to the intent of the legislators in providing protection in all fields of technology.

Both parties in essence rejected what may have been seen as an attempt by the Board of Appeal in T0489/14 to adduce an additional requirement of requiring “a link with physical reality” for subject-matter to be technical. Indeed, the President of the EPO made the point that new technology can often involve the virtualization of older “classical” technology.

Ultimately both parties appeared to place much more importance on the “technical purpose” of the simulation (echoing the Case Law of T1227/05 with which the referring Board of Appeal disagreed). In support of this the President of the EPO put forward the example of simulating human driving behaviour. Whilst at first blush this may seem non-technical, if this were done for the purpose of training autonomous vehicles (which would have to learn how to avoid hitting human driven vehicles) it could and should be, in principle, patentable.

Question Q3
The discussions regarding Q3 were somewhat brief, reflecting perhaps the fact that again the appellant, the President of the EPO, and the preliminary view of the EBoA were in concordance. No-one appeared to want to argue that there should be any special treatment of simulations claimed as part of a design process, and a consistent approach should instead be followed.

Conclusion
Whilst we must await the final written decision of the EBoA for any resolution, yesterday’s hearing does give some cause for optimism. It seems likely that the EBoA will try to avoid answering overly broad questions on this topic which would risk changing the patent landscape for all computer implemented inventions at the EPO. Instead we may expect a focussed decision dealing with the issue of inventions involving simulations. On this, at least from the preliminary opinion on Q1, it seems that these inventions will continue to be patentable, though quite what additional criteria (if any) they will need to satisfy remains to be seen.

The position of the President of the EPO should be considered a positive one. Emphasis in their submissions was placed on trying to maintain the use of the current COMVIK framework whilst keeping in mind that the EPC, originally introduced back in 1973, was intended to be open to fields of technology not yet conceived of. This necessarily requires the Case Law not to be too prescriptive regarding what is required for patentability lest whole new fields of technology are cut off. This is in line with what we have heard from the EPO management for some time, that emerging fields such as machine learning, blockchain systems, and the like must be embraced, but within the current broad framework.

The EBoA are of course independent of the management of the EPO and will come to their own view on these particular questions, but given yesterday’s discussions we can at least be hopeful regarding the direction of travel.