Enlarged Board of Appeal provides guidance on how computer-implemented simulations might be patentable under European Patent Convention

March 23, 2021

The Enlarged Board of Appeal has issued its decision in G 1/19 (Simulations)—Patentability of computer implemented simulations.

The ruling arose in the context of a European patent application which relates to modelling and simulation of movement of a pedestrian through an environment, such as a building. The Examining Division refused the application on the ground that the invention lacked an inventive step, mainly because it considered that the simulation did not contribute to the technical character of the invention. The Enlarged Board of Appeal is the highest judicial authority under the European Patent Convention (EPC). Its main task is to ensure the uniform application of the EPC and the case was referred to it.

Article 52(2) EPC contains a non-exhaustive list of “non-inventions”, that is, subject matter which is not patentable because it is not technical. This list includes “programs for computers” (Article 52(2)(c) EPC). However, the exclusion from patentability is limited to “the subject-matter or activities as such” (Article 52(3) EPC).

A claim to a computer-implemented invention usually consists of a mixture of technical features (eg a computer or a mobile phone) and non-technical features (eg a computer program). These are called mixed inventions.

Whether a mixed invention involves an inventive step is assessed by the European Patent Office using the approach outlined in the COMVIK case (T 641/00). This requires that only claim features contributing to the technical character of the invention are considered to assess inventive step. Features which, taken in isolation, are non-technical may, in the context of the claimed invention, nevertheless contribute to the technical solution of a technical problem, and thereby to the technical character of the invention (eg a computer program controlling a machine to prolong the life of that machine).

The Enlarged Board of Appeal ruled that the COMVIK approach applies to computer-implemented simulations. It held that such simulations must be assessed according to the same criteria as any other computer-implemented invention, including the question whether a claimed feature contributes to the invention’s technical character. Any technical effect going beyond the normal electrical interactions within the computer on which the simulation is implemented (that is, any “further technical effect”) may be considered for inventive step.

The invention underlying the referral concerned a simulation process comprising only numerical input and output, without any interaction with physical reality (following the referring board’s formulation, a “computer-implemented simulation as such”). The Enlarged Board stated that a claimed feature of a computer-implemented invention may contribute to the technical character of the invention not only if it is related to a technical effect in the form of input (eg the measurement of a physical value) or output (eg a control signal for a machine). Such a direct link with physical reality is not required in every case. In particular, technical effects may also occur within the computer-implemented process (eg by specific adaptations of a computer or of data transfer).

For the assessment whether a simulation contributes to the technical character of the claimed invention, it is not decisive whether a technical or a non-technical system or process is simulated.

These principles apply equally if the claimed computer-implemented simulation is part of a design process.

This is the first time that the Enlarged Board has decided on questions relating to how computer-implemented inventions should be examined.