Referral to the EPO Enlarged Board (G1/19)

A Board of Appeal of the EPO has referred a question to the Enlarged Board of Appeal relating to the exclusion of certain aspects of computer-implemented inventions from protection. The referral has been allocated case number G1/19.

The Enlarged Board of Appeal is the most senior level of Appeal available from decisions by the EPO and is only accessible on very limited grounds. Questions can only be referred to the Enlarged Board “in order to ensure uniform application of the law” or “if a point of law of fundamental importance arises”. Questions can only be referred by a Board of Appeal or the President of the EPO.

This referral is the first relating to the EPO’s policy on Computer-Implemented Inventions since the ill-fated attempt in 2008 by the then-President to have the Enlarged Board consider the patentability of computer programs. That referral was deemed inadmissible by the Enlarged Board and essentially the EPO thought all was well with their approach.

The current case (T0489/14) relates to a method for simulating the movement of people around a space and is related to a number of the EPC’s exclusions, including computer software, mathematical methods, and potentially business methods. The Board has taken the view that they cannot arrive at a decision directly from the EPC and existing case law, and that the point of law is of fundamental importance. They have therefore referred the following questions to the Enlarged Board:

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?

The case will now move to the Enlarged Board and into a process which typically takes 1 - 2 years to reach a decision. It will therefore be some time before we benefit from whatever pearls of wisdom the Enlarged Board will share.

During the referral, processing of applications, oppositions, and appeals in which a decision depends only on the outcome of the referral can be stayed at the request of the parties. We could therefore see a large number of cases grind to a halt where applicants consider the Enlarged Board may change the status-quo in their favour.