Recently, in the decision T 0489/14 the EPO’s Boards of Appeal published their referral of three questions relating to computer implemented simulations to the Enlarged Board of Appeal. Referrals to the EPO’s Enlarged Board of Appeal do not come around often, referrals in the area of computer technology even less so.
The purpose of referrals to the Enlarged Board of Appeal is to prevent divergence and/or provide clarity on the implementation of the law. To give some background to why this referral has been made, the invention in the appealed application involved a computer implemented method used to simulate the movement of a crowd of pedestrians through an environment. The purpose of the simulation being to aid in designing a venue such as a railway station or a stadium.
The Board of Appeal were of the opinion that the invention lacked an inventive step asserting that the claimed steps do not provide a technical effect beyond the implementation of the method on the computer. The applicant argued against this reasoning citing a previous Board of Appeal case T 1227/05 (Circuit simulation I/Infineon Technologies).
T 1227/05 related to the simulation of circuits to determine how they are affected by noise before they are fabricated. In T 1227/05 it was found that the simulation methods themselves are part of steps of the fabrication process, and as such a simulation method cannot be said to lack a technical effect only based on the fact that they do not incorporate the physical end product.
The Board of Appeal accepted the applicant’s arguments that the present application was analogous with the case in T 1227/05. In T 1227/05 the invention was found to have a technical effect as the simulation enabled the chance of success of a prototype to be determined before it is built. In comparison the present case involved simulating a model environment with respect to pedestrian crowd movement before the environment had been built, with the Board accepting that the behaviour of a crowd of pedestrians moving through an environment as being a technical property of the environment.
Despite the similarity between the two cases the Board of Appeal were not convinced by the reasoning given in T 1227/05. They recognised that as this case is referred to in both the Case Law of the Board of Appeal1 and the EPO’s Guidelines for Examination2 to reject the present application and go against the previous decision would lead to a divergence in the law, and provide uncertainty for applicants. Hence the need to refer these questions to the Enlarged Board of Appeal for some clarity on the issue.
The questions to be referred are:
- 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 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?
- 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?
These cases can be compared with the Haliburton decision (Halliburton v Comptroller-General of Patents [2011] EWHC 2508 (Pat)) which represents the approach taken in the UK. The invention in the Haliburton decision was related to simulations, specifically a method of designing a drill bit with the help of computer simulation. Like the cases mentioned above the step of manufacturing the end product was not claimed, i.e. the step of producing the designed bit. Therefore, there was a question of whether the simulation was technical. Although the approach in the UK is different to the EPO, with it being a question of excluded subject matter rather than inventive step, the outcome should be consistent. Judge Birss in the Haliburton decision construed the claim as not falling within any of the exclusions. Judge Birss decided that
“designing drill bits is obviously a highly technical process, capable of being applied industrially. Drill bit designers are, I am sure, highly skilled engineers. The detailed problems to be solved with wear and ability to cut rock and so on are technical problems with technical solutions. Accordingly finding a better way of designing drilling bits in general is itself a technical problem. This invention is a better way of carrying that out.”
Thus, in the Haliburton decision the outcome was that the claim was patentable, similar to what was found in T 1227/05.
It will be interesting to see if the Enlarged Board of Appeal comes to the same opinion as Judge Birss in the Haliburton decision, such that the approach between the EPO and UKIPO regarding simulations are consistent.
There is also the question of whether for this particular case the UKIPO would have been of the same opinion as the EPO that the behaviour of a crowd of pedestrians moving through an environment is technical. It is very possible that they would deem it not to be.
The outcome of this referral could raise questions regarding inconstancy when compared to the EPO’s approach regarding computer program product claims that are configured to perform a specific method. Claims of this type are allowable if the method is deemed to provide a technical effect, even though the method has not actually been carried out. Why should this be any different for a claim directed to a simulation, where it is agreed that the result of designing the outcome of the simulation provides a technical effect?
We anticipate that the Enlarged Board of Appeal will invite amicus curiae briefs on this referral. In any case, we will be watching this closely to see the outcome of this decision as this will hopefully provide some certainty on how computer simulation inventions are handled at the EPO.
1 see Case Law of the Boards of Appeal, 8th edition, 2016, I.A.2.4.3, under f)
2 see Part G, Chapter II, 3.3.2, of the Guidelines for Examination in the EPO (November 2018).