Background of the decision
The patent application that led to this decision of the EBA relates to modelling and simulating the movement of a pedestrian through an environment.
In 2013, the Examining Division at the EPO refused the initial patent application. It argued that it lacked inventive step, mainly because it considered the simulation not to contribute to the technical character of the invention. However, the applicant appealed and the EBA was requested to clarify the existing case law on computer simulations under the European Patent Convention (EPC). The EBA is the highest judicial authority under the European Patent Convention (EPC). Its main task is to ensure the uniform application of the EPC.
The assessment of inventive step
Article 52(2) EPC contains a non-exhaustive list of "non-inventions", i.e. subject-matter which is not patentable because it is not technical. This list also includes "programs for computers" (Article 52(2)(c) EPC). A claim to a computer-implemented invention usually is a mixed invention, consisting of technical features and non-technical features.
Whether a mixed invention involves an inventive step is assessed by the EPO using the COMVIK approach. This requires that only claim features contributing to the technical character of the invention are considered for the assessment of inventive step. Features which are non-technical may, in the context of the claimed invention, nevertheless contribute to the technical solution of a technical problem, and thereby to the overall required technical character of the invention.
During the appeal proceedings in 2020, similarities between G 1/19 and a case, which concerns a patent owned by Infineon Technologies were noticed.
In the Infineon case, the Technical Board of Appeal found that the simulation constitutes an adequately-defined technical purpose and thus is patentable. During the G 1/19 technical hearing, the Board also found that the Infineon judgment supports the reasoning behind G 1/19. However, despite the similarities between the Infineon and G 1/19 cases, the Board questioned to what extent G 1/19 could apply the Infineon reasoning.
Individual case decisions, following the COMVIK approach
In summary, the EBA holds that 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 simulations implementation on a computer.
A certain group of computer-implemented inventions (i.e. simulations) should not be excluded a priori from patent protection. It also says that in the COMVIK approach, a patent office must assess individual features of a computer-simulated invention regarding inventive step. The EBA notes that the EPO must examine numerical simulations on a case-by-case basis. Thus, the EPO can decide whether a computer-simulated invention meets the ‘technicality’ criteria.
The EBA decided that computer simulation inventions must be assessed according to the same criteria as any other computer-implemented invention, also with regard to the question whether a claimed feature contributes to the invention's technical character.
It does not matter whether or not the simulated system itself is technical. What matters, however, is whether the simulation contributes to solving a technical problem. In taking this position, the board has deviated from the Infineon case, which decided that the simulation of a physical system itself is a technical purpose”.
Patent filings on software-implemented inventions are benefitting from the decision as it creates the opportunity for a more uniform application of patent case law. Also it could pave the way for development of further criteria to assess inventive step in the future.
Overall, software-implemented inventions are attracting increasing attention, not least because of their potential importance in IoT and AI applications.