October 30, 2019

The President of the EPO has filed his comments in the matter of the referral G 1/19 (“Patentability of computer-implemented simulations”) to the Enlarged Board of Appeal, arguing for maintenance of the current practice for assessing the inventive step of computer-implemented inventions.

The President recalls that in February 2019, the Board of Appeal referred questions relating to the assessment of inventive step of computer-implemented simulations to the Enlarged Board of Appeal.

The patent application underlying the referring decision related to a computer-implemented method for simulating movement of a pedestrian crowd through a modelled environment or building structure.

The President notes that, in its reasoning, the Board disagreed with the EPO Board decision in T 1227/05. It therefore asked the following questions:

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?

• 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 President says that the well-established problem-solution approach should remain applicable in these cases. In the President’s view, the principle of narrow interpretation of the exclusions from patentability and the dynamic understanding of the terms “technical” and “technology” are shared between the EPO and major jurisdictions. These principles allow for accommodating new technological developments in the legal framework of the EPC. It is within this framework that the problem-solution approach provides for the assessment of the patentability of computer-implemented simulations of technical systems or processes.

Despite arguing for maintenance of the current practice for assessing the inventive step of computer-implemented inventions, the President welcomed the opportunity for the Enlarged Board of Appeal to further clarify the practice. For a link to the President’s comments in full, click here.