EPO board seeks computer-implemented invention certainty
The European Patent Office’s (EPO) Technical Board of Appeal has referred questions relating to computer-implemented inventions to the Enlarged Board of Appeal (EBA).
This is the second time that questions relating to the patentability of software have been considered by the EBA, according to law firm Venner Shipley.
“Indeed, it could be the first case that the EBA actively decides on a point of fundamental importance: although the EBA considered a referral in G 3/08 (Programs for computers), it declined to hand down a decision, ruling that the referral was inadmissible,” said a release from Venner Shipley.
The law firm drafted and prosecuted the patent application, which covers an invention for modelling pedestrian movement which can be used to help design or modify venues such as a railway station or stadium.
In 2013, Monaco-based James Connor (the applicant) appealed against an examination decision to refuse the application, which had found that the application lacked an inventive step, as a simulation model was non-technical and its implementation on a computer was obvious.
On appeal to the Technical Board of Appeal, Connor relied on decision T 1227/05 (Circuit simulation I/Infineon Technologies).
In T 1227/05, the EPO found that the numerical simulation of a noise-affected circuit had been found to be a functional technical feature.
On February 22, 2019, the appeal board agreed that T 1227/05 supported Connor’s case, but doubted the reasoning provided in the decision.
First, it said that a computer-implemented simulation of a circuit or environment is a tool that can perform a function "typical of modern engineering work", but it only assists the engineer in the cognitive process of verifying the design of the circuit or environment.
While the circuit or environment may be a technical object when realised, the cognitive process appears to be “fundamentally non-technical”, said the Technical Board of Appeal.
Second, the board found that the earlier decision seems to rely on the greater speed of the computer-implemented method as an argument for finding technicality.
It added: “But any algorithmically specified procedure that can be carried out mentally can be carried out more quickly if implemented on a computer, and it is not the case that the implementation of a non-technical method on a computer necessarily results in a process providing a technical contribution going beyond its computer implementation.”
The board went on to state that, given the important role that numerical development tools and computer-implemented simulations play in the development of new products, legal certainty in respect of the patentability of such tools is “highly desirable”.
Three questions were referred to the EBA.
The first question asked: “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?”
If the answer to the first is yes, the appeal board has asked what the relevant criteria are for assessing whether a computer-implemented simulation claimed as such solves a technical problem?
As part of this question, the appeal board has asked whether it is sufficient that the simulation is based, at least in part, on technical principles underlying the simulated system or process.
Finally, the board asked what the answers to the first and second questions would be if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.
Pawel Piotrowicz, the partner at Venner Shipley who has handled the application throughout, said: “Given the ubiquity and importance of computer simulation in research and development today, a decision by the Enlarged Board of Appeal in this case would have a significant impact and so the referral will be of interest to anyone who uses computer modelling and simulation in designing products of any type.”
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