Introduction
Decision G1/19 of the Enlarged Board of Appeal of the European Patent Office (EPO) was eagerly awaited by the IP world. In the context of this decision, questions had been addressed to the highest level of the EPO because there were potentially conflicting decisions of the Boards of Appeal on the question of whether a computer-based simulation of a real activity can be protected as a patent. In principle, it is well known that computer programs as such cannot be patented unless they are part of a technical method which achieves a technical effect going beyond the lines of code themselves. The question at issue here was how a computer simulation of a real process should be treated under this approach.
Key message of G1/19
The good news is that computer-implemented simulations are not excluded from patentability in Europe. Thus, it can also be assumed that so-called digital patents comply with the requirements of the European Patent Convention (EPC). There are aspects of computer-implemented simulations that the Enlarged Board of Appeal considers could be patentable. Moreover, the key factor in each case will be whether the computer-implemented simulation has a “technical effect”. The Enlarged Board of Appeal also clarified that the EPO’s existing COMVIK approach to assessing the patentability of computer-implemented inventions also applies to simulation-type inventions.
Background to the case before the Enlarged Board of Appeal
The patent application underlying G1/19 concerns a simulation method comprising a numerical input and a numerical output. The method simulates the movement of persons, e.g. in a passageway of a building. The steps of the method are characterised by simulating human characteristics, such as social distancing within a crowd and moving into gaps of a crowd when they appear. Thus, buildings should be able to be adapted to expected flows of people already in the planning phase.
Summary of the statements of decision G1/19
As mentioned, it was confirmed that the established approach for assessing the inventive step of computer-implemented inventions, the “COMVIK approach”, is applicable to computer-implemented simulations. In addition, the following further points were noted:
- Establishment that features of a simulation do not automatically contribute to the technical character of the invention merely because the simulation is based on technical principles underlying the simulated system;
- Confirmation that features of a simulation that lead to a further technical effect (i.e. a technical effect that goes beyond the normal electrical interactions within the computer on which the simulation is implemented) can be considered inventive;
- Confirmation that technical effects can occur within a computer-implemented method and at the input and output of the method;
- Confirmation that “implicit” technical effects can be achieved in combination with an unclaimed apparatus or process outside the computer if the output data of the computer is technical in nature;
- Comments that diminish the value and usefulness of T1227/05 (INFINEON) as case law; and
- Comments highlighting differences in practice between the EPO and the courts and national patent offices in European countries.
Conclusion
So, what do these findings mean for applicants and practitioners? In short, the decision confirms that all computer-implemented inventions, including simulations, should be examined in the same way, namely according to the COMVIK approach. It also provides precise guidance to practitioners on how to write descriptions for computer-implemented inventions. The decision could also lead to further examination of whether there could be different results when the same computer-implemented invention is examined at the EPO and at national patent offices such as the DPMA (German Patent and Trademark Office).
This means that your simulation invention could be patentable like all computer-implemented inventions, but only if it can be directly linked to an effect that is considered technical.
The decision confirms that no group of computer-implemented inventions can in principle be excluded from patent protection and that computer-implemented simulations do not occupy a privileged position within the larger group of computer-implemented inventions. This suggests that all computer-implemented inventions, including those in the field of artificial intelligence and machine learning, should be treated in the same way when examined by the EPO. Thus, it can also be concluded that so-called digital patents are also accessible to patent protection in Europe, as long as technical effects are taken into account when drafting the application documents.
Due to MSP’s vast experience in drafting application documents for computer-implemented inventions and so-called digital patents, we are able to protect your ideas in the most effective. We are also happy to advise you on your strategic positioning in digital patent matters.
Christian Kröner