Excluded Subject Matter (10) - Simulations (G1/19)

The EPO’s Enlarged Board of Appeal has been considering questions relating to the patentability of simulations in case G1/19 and has recently issued its decision. The Enlarged Board only hears a few cases each year which are referred to them by Boards of Appeal or the President of the EPO who present questions relating to conflicting case law or issues of fundamental legal importance.

In G1/19 the appeal board referred a set of questions relating to how computer-implemented simulations should be assessed under the EPC and whether specific considerations apply to them.  In particular, the questions consider the assessment of inventive step of computer-implemented simulations. 

The EPO's current approach for assessing inventive step of computer-implemented inventions is that only features which contribute to the technical character of the claim can be considered in the assessment.  This is discussed in more detail in our earlier article on the patentability of software in general.  The word "character" is important as this allows non-technical features to be considered as long as they contribute to the overall technical character. 

This sounds like a subtle academic distinction but can be important in certain areas, for example simulations.  A non-technical feature may contribute to technical character if it achieves a technical effect by controlling equipment or processing physical data. However, a simulation is arguably a self-contained process that does not process physical data, nor control equipment. The question then arises whether simulations are a special case.  For example, a simulation can be used to design an improved circuit but should the technical effect depend on whether or not the improved circuit is then manufactured? 

The assessment of inventive step is often also considered in relation to whether the invention provides a "further technical effect" which goes beyond the normal functioning of a computer system.  This language is used in the questions. 

The three questions referred to the Enlarged Board were:

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 referred questions are formulated in the general sense, rather than addressing the specific points of the patent application being considered, as the Enlarged Board is tasked with forming a general view and binding guidance, not deciding the specific case. 

The Decision answers question 1 in the positive - a simulation can provide a further technical effect and solve a technical problem going beyond the simulation's implementation on a computer.  This is really the key point to the decision - simulations are potentially patentable, even if they do not interact with a physical entity. 

The second answer states that it is not a sufficient condition that the simulation is based in whole or part on technical principles underlying the simulated system, and the third answer is that the first two answers are not different if the computer-implemented simulation is claimed as part of a design process. 

Given the somewhat abstract nature of the questions and answers it is only really once we see them being applied in relation to actual cases that we will get a true feel for the impact of this decision. However, the immediate reaction is that the status quo is preserved and that simulations are not a special category to be assessed differently.  Returning to the circuit design example above, this means that a claim directed to simulating the design would not need to include a step of making the improved circuit. 

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.