The EPO has issued its eagerly-awaited decision on G1/19, which deals with inventive step in inventions based on simulations.

The EPO has issued its eagerly-awaited decision on G1/19, which deals with inventive step in inventions based on simulations. The Enlarged Board of Appeal has ruled that a simulation of a system can solve a problem by producing a technical effect which goes beyond its implementation on hardware.  This means that the Enlarged Board of Appeal has maintained that simulation-type claims are patentable according to the same principles (the “COMVIK approach”) as other computer-implemented inventions.

The Enlarged Board has also stated that for the assessment of whether a simulation contributes to the technical character of the claimed invention, it is not decisive whether a technical or a non-technical system or process is simulated.

The invention underlying the referral was a simulation process having only numerical inputs and outputs, without any direct interaction with the real world. The Enlarged Board decided that a claimed feature may contribute to the technical character of a simulation invention even if it is not related to the technical character of an input (e.g. the measurement of a physical value) or output (e.g. a control signal for a machine) of the simulation. Such a direct link with physical reality is not required for an invention to have technical character. In particular, patentability-conferring technical effects may also occur within the computer-implemented process itself (e.g. by specific adaptations of a computer or of data transfer).

In detail, the following questions were referred to the Enlarged Board of Appeal:

  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?

In other words, the first two questions ask whether a simulation-type claim can solve a technical problem even if the method only relates to the simulation itself. The third question asks the first two questions again, but in the case where the claimed method is recited as part of a design process.

The Enlarged Board of Appeal has answered as follows:

  1. 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.
  2. 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.
  3. 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.

The decision can be found here.

Author:

Giovanna Viganò

Technical Assistant
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