Insights: The technical nature of simulation methods – A New Referral to the Enlarged Board of Appeal

In decision T0489/14, the EPO Boards of Appeal have made a new referral to the Enlarged Board of Appeal regarding the patentable nature of computer-implemented simulation methods.

Under European practice, methods implemented on a computer are only considered patentable if the method can be understood to have a “technical effect”. In particular, methods that are considered as only provide a cognitive benefit to the user (e.g. tailoring displayed advertisements to a user’s preference) are not considered technical, whereas those considered to provide a functional benefit (e.g. improved image resolution) are considered to be technical.

A body of case law has been developed at the EPO toward the extent to which computer-implemented simulation methods can be considered technical. In particular, the EPO has developed the position that a computer-implemented method that simulates a technical system under defined technical conditions can be considered to provide a technical contribution (e.g. a simulation of the operation of a circuit board under 1/f noise conditions, as in T1227/05, or the simulation of a nuclear power plant to provide an operational parameter, as in T625/11).

However, when considering the patentable nature of modelling pedestrian movement in a building design process, the Board of Appeal in the present decision T0489/14 disagreed with the reasoning of the earlier decisions of the EPO Boards of Appeal. In particular, the Board in T0489/14 disagreed with the conclusion of T1227/05, and argued that “a technical effect requires, at a minimum, a direct link with physical reality”. It is the position of the Board in T048/14 that a method that merely simulates a technical system does not provide such a direct link with physical reality – they argue that “although a computer-implemented simulation of a circuit or environment is a tool that can perform a function “typical of modern engineering work”, it assists the engineer only in the cognitive process of verifying the design of the circuit or environment… The circuit or environment, when realised, may be a technical object, but the cognitive process of verifying its design appears to be fundamentally non-technical” [emphasis added].

In view of this disagreement with established practice, and with due regard to the “important role that numerical development tools and in particular computer-implemented simulations play”, the Board referred three questions to the Enlarged Board to seek legal certainty on the state of computer-implemented simulation methods at the EPO. The questions are:

(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) 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?
(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?

How the Enlarged Board answers these questions will be of great interest – in particular (and assuming question 1 is answered in the affirmative) the answer to question 2 should help provide certainty on what is required of applicants to demonstrate to the EPO in order to establish the technical character of claims to simulation methods.

We will be monitoring the process of this referral, but if you have any questions in the meantime regarding the patentability of computer-implemented methods, please contact your usual Boult Wade Tennant advisor.