The G1/19 decision by the Enlarged Board of Appeal of the European Patent Office issued on 10 March 2021 provides some clarity for simulation inventions.
Many computer-implemented inventions or software can be illustrated by the below figure: input, output, and optionally input/output interactions during the computer-implemented process. An example of input may include measurement data. An example of output may include control signals for controlling a machine.
This figure shows:
in a simplified, non-exhaustive form – how and when “technical effects” or “technical interactions” may occur in the context of a computer-implemented process.
To demonstrate a technical character, a technical effect of a simulation invention can take place within the computer-implemented process (e.g. by specific adaptations of a computer or of data transfer). The technical effect does not need to be only related to input (e.g. the measurement of a physical value) or output (e.g. a control signal for a machine). Further, a direct link with physical reality is not required.
The two-hurdles approach is valid and applicable to simulation inventions: The first hurdle is overcome when the claimed invention is carried out in a computer. The second hurdle is overcome when the distinguishing features of the claimed subject-matter from the prior art contribute to a technical solution for a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer.
The Decision G1/19 confirms that the two-hurdles approach, which is already applied before the EPO for computer-implemented inventions, is correct and valid also for computer-implemented simulations.
As for any other computer-implemented invention, simulations may be patentable if an inventive step can be demonstrated based on features contributing to the technical character of the claimed simulation method. This is valid irrespective of the nature of the system or the process being simulated. For example, when the process simulated in an invention is seen as a non-technical process, the simulation of such process can contribute to the technical character of the invention. On the other hand, there may be situations where the simulation of a technical system does not contribute to the technical character of an invention.
The Decision G1/19 discusses “potential” technical effect vs “calculated or virtual” technical effect. Calculated technical effects of a simulated system, as well as algorithms used in the simulation process, can contribute to the technical character of the invention if they are related to its specific technical purpose.
The Decision G1/19 also confirms that simulations are to be treated in the same manner as any other computer-implemented invention. Simulation inventions do not hold
a privileged position within the wider group of computer-implemented inventions without there being any legal basis for such a privilege.
The Decision G1/19 clarifies that there is no need for the application of special rules regardless of whether a simulation is claimed as part of a design process or not.
A simple three-points conclusion is:
- A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer.
- For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
- The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.
Read more: www.epo.org/law-practice