Amicus Brief on the Patentability of Computer Simulations filed with the Enlarged Board of Appeal of the EPO in Referral G 1/19

by Alfred A. Macchione (Chair, Standing Committee IT and Internet)

With Bureau approval, on September 2, 2019 our organization submitted the attached  Amicus Brief to the Enlarged Board of Appeal of the European Patent Office under Article 10 of its Rules of Procedure.  The Amicus Brief addressed the questions raised in referral G 1/19 regarding the patentability of computer simulations.  The Brief was prepared by the Standing Committee IT and Internet in cooperation with the Standing Committee on Amicus Briefs.

The Enlarged Board of Appeal was charged with the Referral from Technical Board of Appeal interlocutory decision T 0489/14 dated February 22, 2019.

The G 1/19 Referral questions concern how the established interpretation of the EPO in respect of the patentability of computer-implemented inventions (CII) should be applied to a computer-implemented simulation of a technical system or process. This specific issue is a point of law of fundamental importance and legal certainty in respect of the patentability of such computer-implemented simulation systems and methods is highly desirable.

The Brief presents a useful summary of the official pronouncements of AIPPI in terms of the protection of CII, and goes on to provide a helpful primer on the laws and patent office examination guidelines regarding the patentability of CII in the United States, Japan, China, Germany, the UK and Canada.

The past work of AIPPI in the field of CII clearly and consistently supports a liberal approach towards the recognition and protection of patent rights in CII.  AIPPI, at the outset in its Brief, respectfully invited the Enlarged Board of Appeal to decide and determine the subject matter of Referral G 1/19 as consistently as possible to approach better harmonization with the law and practice of other industrialized jurisdictions worldwide.

The following questions were put to the Enlarged Board of Appeal by way of the Referral:

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?

AIPPI responded to each of the foregoing Referral questions in the affirmative.

The issue before the Enlarged Board of Appeal in the Referral concerned a method for simulating pedestrian crowd movement in an environment such as building construction, the main purpose of the simulation being its use in a process for designing a venue such as a railway station or a stadium.

In its decision, the referring Board had considered case T 1227/05, whose approach to patentability  was incorporated in the EPO Guidelines for Examination of November 2018 that are related to computer-implemented simulations.  Case T 1227/05 relates to the patentability of a computer implemented simulation method using mathematical
formulae. More particularly, the subject matter of case T 1227/05 is directed to the modelling of the operation of a noise-affected electronic circuit to provide for realistic prediction of the performance of a designed circuit. The foregoing modelling ideally allows the simulated circuit to be developed so accurately that a prototype’s chances of successful operation can be assessed before it is built. In case T 1227/05, all steps
relevant to circuit simulation, including the mathematical formulae relied upon to simulate the circuit in question, were found to contribute to the technical character of the simulation method and to be taken into account in assessing novelty and inventive step.

In answer to Question 1 above, AIPPI took the position that the subject matter of the claims at issue before the referring Board of Appeal, in the very same way as physical testing, creates a technical effect beyond merely carrying out the test, in that computer simulations of a technical system produce a technical effect which goes beyond the simulation’s implementation on a computer.

In answer to Question 2 above, the AIPPI response was that computer simulation of a technical process or system, i.e. a process or system governed by laws of nature, makes a technical contribution. The computer simulation constitutes a tool that automatically, and without human interaction, provides knowledge about the behaviour of the technical system or process under certain

AIPPI proposed in its submissions that in the assessment of inventive step, the following two aspects should be considered when establishing the technical content of a claim related to computer-implemented simulations:

(a)     First, is the underlying simulated process or system technical in and of itself?
(b)     Second, is the simulation on a technical device (e.g. computer or software implementation) a feature of the claim?

Where at least one of the foregoing questions (a) and (b) is answered in the affirmative, the computer simulation in question should be duly recognized as having technical character and being patentable if it fulfills the general patentability requirements, i.e. novelty, inventive step and industrial application. Like all other computer-implemented inventions, the subject matter identified by questions (a) and/or (b), should be accepted as patentable if it is new and non-obvious.

Based on the foregoing proposed test, the answer to referral Questions 1 and 2 above remain the same where the computer-implemented simulation is part of a design process such as the verification of a design, provided the underlying simulated process or system
is technical in and of itself.  With this proviso, AIPPI responded to Question 3 above in the affirmative.

In conclusion, the AIPPI Brief recommended that the approach of case T 1227/05 be confirmed by the Enlarged Board of Appeal.  Moreover, it was submitted by AIPPI that the Referral should be decided on the basis of its particular facts in conformity with the said approach, and without adopting any new general principle of patentability as perhaps may have been implied by the Referral questions.