G 1/19: a major decision from the EPO Enlarged Board on the patentability of computer simulations

On March 10, the European Patent Office’s (EPO) Enlarged Board of Appeal published its keenly-anticipated decision G 1/19 on computer-implemented simulations.

G 1/19 holds that the EPO’s existing approach for assessing the patentability of computer-implemented inventions (CIIs) should indeed be used to assess computer simulation inventions. According to this approach, whether a claim has inventive step is assessed using only any features of the claim which contribute to the claim’s “technical character”.

In contrast to a leading earlier case, G 1/19 holds that it is not decisive whether a technical or a non-technical system or process is simulated. Simulation of a technical system is not necessarily technical.

Instead, the technical character of a simulation method may lie in a “direct link with physical reality” in the form of an input (eg, the measurement of a physical value used in the simulation) or an output (eg, the use of the result of the simulation as a control signal for a machine).

When the technical character arises from the direct link with physical reality of the output, ie, due to the use of the simulation result, that use has to be at least implicitly specified in the claim.

For example, if technical character arises because the simulation is part of a design process for a product, the claim must at least implicitly specify that the simulation result is used to produce the product.

Alternatively, even if a simulation method has no direct link with physical reality (eg, it is simulation of a non-technical process for a non-technical purpose), it may still be patentable, eg, if the simulation method is performed using a specially modified computer.

The decision is long (68 pages) and complex but the main points are as follows.

Background

The EPO’s general approach to patenting CIIs is called the Comvik approach (based on the Comvik decision, T 641/00). This holds that features of a claim are relevant to deciding whether the claim has an inventive step only if they contribute to the “technical character” of the claim.

For example, mathematical steps are not regarded as technical themselves, so whether they can be used to establish that a claim involves an inventive step depends on whether they contribute to a technical purpose defined by the claims. There are two ways this can happen: