Enlarged Board reads the crowd: G1/19 and Inventive Step of computer simulations

24 May 2021

While the Summer of 2021 hosts major sporting events such as the European Football Championships and the Olympic Games, all eyes are on how the stadiums handle social distancing measures for large gatherings to prevent fresh Covid-19 outbreaks. Computer simulations on crowd control are an important tool in safely organising these massive events.

In the patenting world, the spotlight was recently also on computer-simulated crowd movement, but for altogether different reasons. The highly anticipated G1/19 decision of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) relating to the assessment of Inventive Step for computer simulations came out earlier in the Spring. While the decision does not contain any major surprises, it does provide some additional pointers for practitioners in this field.

At the heart of this decision is the assessment of Inventive Step using the well-established “two-hurdle approach” for computer-implemented inventions.

TWO-HURDLE APPROACH

The four main requirements for patentability – Technical Character (Art. 52(2) EPC), Novelty (Art. 54 EPC), Inventive Step (Art. 56 EPC), and Susceptibility of Industrial Application (Art. 57 EPC) - are considered essentially separate and independent criteria for patentability. For computer-implemented inventions, Novelty and Industrial Application are evaluated as for any other invention. However, because of the exclusion of computer programs and schemes, rules and methods for performing mental acts (not regarded as an invention in Art. 52(2) and 52(3) EPC as such), computer-implemented inventions in particular need to overcome the so-called “two-hurdle approach” based on the Technical Character test and the assessment of Inventive Step.

For the first hurdle (Technical Character), there is no assessment of prior art. A single technical feature (such as an all-purpose computer) mentioned in the claim is enough to overcome this hurdle, as clearly set out in G 3/08.

For the second hurdle (Inventive Step), the prior art and technical problem to be solved are assessed. Normally, only technical features that differ over the closest prior art are considered for the assessment of Inventive Step. However, based on decision T 641/00 (COMVIK), a more holistic approach is used, whereby also non-technical steps or features may be considered if they also contribute to the solution of the overall technical problem. This approach for so-called “mixed inventions” comprising both technical and non-technical features is now well entrenched in practice before the EPO.

A shift has taken place in the relative level of each of these two hurdles in the sense that it has become easier to clear the Technical Character hurdle of Art. 52 EPC, but more difficult to meet the requirements of Inventive Step of Art. 56 EPC. As result of this shift, there is now in effect an additional intermediate step to assess the “eligibility of the feature to contribute to Inventive Step”.

In a particular case related to crowd simulation, the assessment of technical character required for Inventive Step turned out to be quite tricky.

CROWD SIMULATION

The patent application in question relates to a computer-implemented simulation of the movement of a pedestrian crowd in a building structure. The simulation tool could be used to aid in architecturally designing venues, such as stadiums and railway stations. Claim 1 of the main request already referred to a computer-implemented method, thus had no problems overcoming the first hurdle of Technical Character. However, citing no documents, the Examining Division refused the application based on a lack of Inventive Step over a general-purpose computer.

Before the Technical Boards of Appeal (TBA), the Applicant referred to oft-cited previous decision T 1227/05 (INFINEON), whereby a numerical simulation of a noise-affected circuit was found to be a functional technical feature. The TBA agreed that the present case was similar to INFINEON, which should have supported the Applicant’s case. However, the TBA was not convinced by the reasoning provided in the previous decision and felt that even though a simulation may assist in the design of a physical environment, the cognitive process of theoretically verifying a design was fundamentally non-technical. In the present case, the TBA felt that the sequence of steps of simulating pedestrian movement could theoretically be carried out as mental acts (albeit with pencil and paper for more complex calculations). The TBA also believed that a technical effect requires, at a minimum, a direct link with physical reality. Therefore, the TBA found the claims to lack an Inventive Step starting from a known general-purpose computer as the closest prior art.

Since INFINEON had been implemented in the Guidelines for Examination, and was explicitly cited in the Case Law Book, the TBA felt that the present decision could create conflicting case law and legal insecurity. Therefore, the TBA decided to refer several specific questions regarding the patentability of simulation methods to the Enlarged Board of Appeal (EBA) as referral G1/19.

THREE’S A CROWD

The TBA referred 3 questions to the EBA:

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. [2A] 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? [2B] 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?

QUESTION 1 – SOLUTION OF A TECHNICAL PROBLEM BY A SIMULATION AS SUCH

The EBA stated that no group of computer-implemented inventions can be a priori excluded from patent protection, and therefore Q1 needed to be answered in the affirmative. Furthermore, the COMVIK approach requires an assessment of the technical contribution of the individual features of computer-implemented inventions. While a direct link to physical reality could be sufficient to establish technicality, this is no absolute requirement, since like any other computer-implemented method, a simulation without an output having a direct link with physical reality may still solve a technical problem. Even though a direct link with physical reality, based on features that per se are technical and/or non-technical, is in most cases sufficient to establish technicality, it cannot be a necessary condition, if only because the notion of technicality needs to remain open.

Therefore, a simulation as such may still be found to be patentable, in line with INFINEON.

"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."
- EBA answer Q1

If the claimed process results in a set of numerical values, it depends on the further use of such data (which use can happen as a result of human intervention or automatically within a wider technical process) whether a resulting technical effect can be considered in that assessment. However, care needs to be taken that if the potential technical effect follows from an intended use, this use needs to be, at least implicitly, defined in the claim. If on the other hand the output data may have genuine non-technical uses, then the technical effect would not be achieved over the entire scope of the claim.

In this context, it is important to note that the often-quoted criterion of INFINEON that the simulation constitutes an adequately defined technical purpose for a numerical simulation method if it is functionally limited to that purpose should not be taken as a generally applicable criterion of the COMVIK approach for computer-implemented simulations, since the findings of INFINEON were based on specific circumstances which do not apply in general.

QUESTION 2A – RELEVANT CRITERIA

Question 2A was considered inadmissible, since the EBA found it impossible to give an exhaustive list of (positive or negative, alternative or cumulative) criteria for assessing whether a computer-implemented process solves a technical problem by producing a technical effect that goes beyond the implementation of the process on a computer. This applies to all computer-implemented processes, not only to simulations.

Question deemed inadmissible.
- EBA answer Q2A

The EBA also noted that any definition of a technical invention may have to be extended in the course of time in order to accommodate new technical or scientific developments or to reflect societal changes.

QUESTION 2B – TECHNICAL PRINCIPLES AS A SUFFICIENT CONDITION

Since question 2A was found inadmissible, the EBA slightly reworded question 2B as a stand-alone question:

2B. For the assessment of whether a computer-implemented simulation claimed as such solves a technical problem, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

Following the COMVIK approach, features that are non-technical per se may still contribute to the technical character of a claimed invention, just as features that are technical per se will not necessarily contribute to it. In a similar way, the simulation of non-technical processes may or may not contribute to the technical character of an invention. On the other hand, it may be that the simulation of a technical system does not contribute to it.

A simulation is necessarily based on the principles underlying the simulated system or process, but even if these principles can be described as technical, the simulation does not necessarily have a technical character. Were it sufficient, for the purposes of question 2B, for the simulation to be based on technical principles, then computer-implemented simulations would hold a privileged position within the wider group of computer-implemented inventions without there being any legal basis for such a privilege. Question 2B was therefore answered in the negative, which means that for numerical simulations too it must be examined on a case-by-case basis whether the standard “technicality” criteria for computer-implemented inventions are met.

“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."
- EBA answer Q2B

The reverse does not hold either. If the fact that a simulated system or process was based on non-technical principles necessarily meant that the simulation could not have technical character, this would mean a particular group of numerical simulations being discriminated against without any legal basis for such discrimination.

In view of this, the EBA was of the opinion that it is neither a sufficient nor a necessary condition that a numerical simulation is based, at least in part, on technical principles that underlie the simulated system or process. A technical effect may be present whether or not the simulation is based on technical principles underlying the simulated system.

QUESTION 3 – SIMULATION AS PART OF A DESIGN PROCESS

Q3 refers to claims explicitly mentioning a design process, which is normally a cognitive activity. However, it certainly cannot be ruled out that in future case there may be steps within a design process involving simulations which contribute to the technical character of the invention.

Following the COMVIK approach and depending on the technical context, features relating to a design may or may not contribute to the technical character of a claimed invention. The EBA did not see any need for the application of special rules if a simulation is claimed as part of a design 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.”
- EBA answer Q3

A design process should therefore be evaluated as any other computer-implemented process. As stated above, care should be taken that the design results in a technical effect or a further technical use.

CONSEQUENCES FOR THE CASE UNDER REVIEW

For the crowd simulation application, the Applicant has been summoned for Oral Proceedings, and no final decision has yet been taken. However, based on the G1/19 decision, the TBA has stated in their preliminary opinion that the potential use of the calculated data is not limited to technical purposes, as it could for example be used in video games. Therefore, the produced data reflecting behaviour of a crowd moving through an environment is likely to be found not to contribute to a technical effect. Unless the Applicant finds convincing counter-arguments, the application is expected to be refused for lack of Inventive Step. At least for simulation inventions, the second hurdle clearly remains a tough one to clear!

TAKE HOME MESSAGE

Visibly, the EBA did not wish to provide any special treatment for computer-implemented simulations compared to other computer-implemented inventions. This also has ramifications in other rapidly evolving fields of computer technology, such as AI, which should likewise not expect any special treatment.

As expected, the good news for Applicants is that COMVIK can be continued to be universally applied; the existing Guidelines already provide adequate guidance for the assessment of Inventive Step for mixed inventions comprising technical and non-technical features.

The bad news for Applicants is that INFINEON cannot be generally applied: the contribution of each feature to the alleged technical effect must be evaluated on a case-by-case basis. An alleged further technical use of the simulation needs to have an impact on physical reality, and such use needs to be at least implicitly specified in the claim. The EBA did comment that a technical effect going beyond the simulation’s implementation should be open to further development as technology evolves, and it should even be possible for other criteria to emerge if they lead to more appropriate interpretations of the law.

Towards practitioners, we would recommend thinking pro-actively about possible technical effects (which may include an increased accuracy of the simulation or a reduction in computational expense), actively providing possible further uses in technical fields, and highlighting these in the application during the granting stage. It is particularly important to also clarify the contributions of non-technical features towards solving potential technical problems.

We would also suggest providing at least some fallback positions including steps preceding the simulation (where does the input come from?) and/or following the simulation (what is the output used for?), thereby providing a clear link with technical effects in the physical world. In order to obtain a broader claim without these additional steps (e.g., to avoid discussions of contributory infringement), a technical further use must be at least implicitly specified in the claim.

All in all, computer simulations as such can still be patented, which is good news for practitioners in a wide range of fields. However, patenting simulations as such remains difficult, and proper care needs to be taken particularly during the crucial drafting stage. Of course, the patent attorneys at De Clercq & Partners will gladly advise you on this matter.