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article 9 Jul 2020

Computer implemented simulations - G1/19 Amicus Curiae selections

With the oral proceedings for the referral G 1/19 scheduled on July 15, 2020, it might be worth looking into the perspective of some of the third parties interested in the outcome of the referral.

Claim 1 of the main request relates to a simulation based on a defined model of the behavior of a human agent (a pedestrian) in a crowd.

Claim 1 of the fourth auxiliary request specifies a method of designing a building structure comprising the simulation steps.

A quick recap into the questions of G 1/19.

Q1. 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?

Q2. 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?

Q3. 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?

Point 11 of the decision of the Board of Appeal (BoA) for the case (T0484/14) associated the technical effect to a direct link with physical reality, such as a change in or a measurement of a physical entity. According to the Board, it was entirely plausible that the environment being modelled might not even exist, and that the simulation might be run to support purely theoretical scientific investigations or movement of pedestrians through the virtual world of a video game.

In point 15 of the decision and in reference to T1227/05 (simulation of a circuit), the present BoA was of the opinion that a circuit or environment, when realized, may be a technical object, but the cognitive process of theoretically verifying its design appears to be fundamentally non-technical. According to the Board, T1227/05 decision appeared to rely on the greater speed of the computer-implemented method as an argument for finding technicality. But the Board considered that any algorithmically specified procedure that can be carried out mentally can be carried out more quickly if implemented on a computer, and it is not the case that the implementation of a non-technical method on a computer necessarily results in a process providing a technical contribution going beyond its computer implementation.

Unsurprisingly, the answer to Q1 was an almost unanimous “yes” in the reviewed briefs. A few interesting lines of reasoning for each question of the referral are presented below.

The cognitive process of theoretically verifying its design appears to be fundamentally non-technical

Opinions

According to VPP (Vereinigung von Fachleuten des Gewerblichen Rechtsschutzes), simulations require models whose characteristics imitate a physical object to be simulated. The development and implementation of such models require the same technical and scientific considerations and the same natural forces to be taken into account, as the corresponding entities in real world. Thus, the real tangible entity and its representation in the simulation are on an equal footing with each other.

An analysis of features and behavior of virtual objects which simply represent real world entities which may not (yet) exist, is immaterial to assessment of the technical contribution of a technical simulation.

Decisions T 208/84, T 533/09 and T 1586/09 which did acknowledge the technicality of computer simulations are cited by VPP. Further, decision T 1173/97 is pointed out, which makes no difference between a further technical effect and the potential to produce this effect in the context of computer programs.

The results of a simulation, for example, those for evaluation of a virtual crash test, are considered on par with results achieved using physical measurement devices or tests, e.g. length measurements using a device. As a matter of fact, a computer implemented simulation of a technical system would make available measurements, with the help of which, both static and dynamic technical characteristics of the simulated system (..think of critical parameters of a nuclear reactor) can be determined in an objective, precise and quicker manner.

Such measurements portray a shortcoming of the simulated technical system and trigger further technical development steps in an iterative manner. These further steps would have not been possible, if not for the disputed simulation.

Denying the presence of a link to physical reality to virtual models and virtual representations of physical entities and restricting the concept to tangible objects is seen by many as inappropriate in today’s state of technology with less pronounced lines between real and virtual entities.

BDPA (Bundesverband Deutscher Patentanwälte) finds the requirement for a simulation to have any link with physical reality counter-intuitive. A simulation produces information, without this information in any manner influencing the real world.

The technical effect is regarded to instead stem from the considerations involved in developing the underlying model of the technical system which is to be simulated. An analysis of the technical system or process is required to develop its mathematical model.

According to Siemens, a patent assessment based on an understanding focused on mechanical inventions of the past is insufficient to determine patentability of the digital inventions of the present.

Computer simulations help achieve significant improvements and resource economy in processes and thus involve a technical effect. The technical character of the effect is not only visible in a tangible manner with the actual deployment of the invention after simulation, but also before, when it is not yet tangible.

For example, the simulation would have saved resources in not enabling a non-functioning prototype to materialize as a result of its prediction/results. This translates to a technical effect, even if not tangible.

It is urged, therefore, that the non-tangible technical effect be also given merit.

The decision T 453/91 from 31.05.1994, which was cited by present Board, had mandated that the actual manufacturing of the chip to be included in the claim. This is not seen appropriate, as for an invention which exclusively resides in an improved chip design, this step is not considered essential.

Such a requirement is also stated to discriminate against pharmaceutical/biotechnological inventions, where not all patented compounds lead to a drug which can be sold in the market.

To insist on including a non-essential feature in the claim would appear to be a potential violation of Art. 84 EPC, which dictates that the claim should be concise. Further, such inclusion shifts the end user who exploits the invention and thus targets the wrong person while assessing infringement of the patent. It would not be the person producing the improved design of the patent who risks infringement, but the person who manufactures the chip using the improved design.

It should be possible to stop the first person who illegally exploits the invention. A shift to someone down the chain, and especially of the end user is undesirable. This will, however, be the consequence if a direct link to tangible assets is insisted upon, says Siemens.

Going by the definition of a simulation in point 21 of the decision, it is an approximate imitation of the operation of a system or proess on the basis of a model of that system or process.

Simulations are considered to be always technical, if they, on the basis of an approximate imitation of physical principles of the real world, provide an assessment or prediction on the behavior of a simulated technical entity.

Since simulations are merely an approximation, it is possible that the simulation yields results which do not correspond to reality. To deal with such false results has always been a typical activity of an engineer. He must be able to recognize false predictions to be able to establish their origin and to be able to come up with better simulations which approximate the behaviors of real world better.

The development of the model itself is considered to be a technical problem and a challenge for any engineer. Since a simulation uses such a model, its development is also considered to be a technical problem.

If a link to physical reality is still to be insisted upon, then taking into account the physical principles which exist in the real world in a simulation provides this link.

However, it is reiterated that this link be considered a sufficient, and not an essential criterion for the existence of technical character, because the requirement is biased towards the past which relied on tangible mechanical inventions, would be too restrictive for digital inventions.
 

A simulation is completed when it imitates the behavior of the system or process.

A simulation is completed when it imitates the behavior of the system or process.  A concrete use of the simulation is therefore unnecessary to establish its patentability, and is considered an non-essential and artificial restriction.

It is in fact immaterial that the simulation invention materializes in real world. This has already been acknowledged in T 1173/97 (IBM) according to which a computer program (-product) can be patented, not only the actual execution by the end user. One must acknowledge that computer implemented inventions have the potential to produce a technical effect, and that this potential is reached by the fact that the manufacture of faulty prototypes can be prevented and better alternatives can be reached using a simulation.

The technical contribution of a simulation can also lie in its potential to establish findings on otherwise unrecognizable real phenomena, in a manner like the microscope makes possible recognition of micro structures, or an IR camera which makes possible recognition of IR radiation, which are otherwise invisible to the naked eye.

However, whether this potential is actually met is as insignificant as whether the image created by a microscope or an IR camera is actually observed [by an end user].

It is further considered whether a simulation of virtual world can also be technical. Videogames represent a field which involves massive industrial application and inventive activity. It has been accepted that technologies implemented in videogames can be protected.

Virtual reality and augmented reality are further examples where virtual environments are common practice. But technologies which implement visualization of such virtual environments are not excluded from patentability. A difference between the virtual environment in videogames and the objected building plan which is alleged as not being real (T0484/14) seems minimal.

A simulation of virtual reality, based on an approximate imitation of physical principles of the real world, predicts behavior of a virtual technical entity or method which corresponds to the real world – in a manner similar to any other simulation.

According to the Patentanwaltskammer, the Board, in its decision, appears not to consider the computer on which the simulation is run as a “physical reality”. This goes against the interpretation of T 0258/03 (Hitachi) which was confirmed by G 3/08, and which acknowledges both a computer as well as a method implemented on a computer as being technical and not excluded from patentability.

Like Siemens, the body favors the approach of T 1173/97 to assess a simulation - that a potential to produce a technical effect is sufficient to acknowledge patentability of an invention, without the subject matter relating to technical implementation of the simulation (via manufacturing or control of a process/entity) being included in the claim.

This is further argued, again in analogy, with a mechanical hammer. A hammer, as such, apparently has no technical effect, unless put to use by a user. It thus merely has the potential to bring about the technical effect. However, it is never required to include the use or technical effect of the hammer in the claim. If the use of a technical device were to be necessarily additionally included in a claim to acknowledge the technical effect of the device, the scope of a patent claim is unnecessarily narrowed.

It is therefore found unreasonable to introduce additional restrictions to computer simulations of technical systems or processes. In both instances, it should be sufficient that the claimed entity possesses the potential, by virtue of its implementation, to bring about a technical effect.

A simulation is set up to lend a virtual technical system or method characteristics of a corresponding system or method in real world, by being based on the underlying physical of the system or method in the real world. Like VPP and BDPA, the Patentanwaltskammer argues that the development of such a concept is a technical problem, irrespective of the complexity of its implementation.

An increasing number of inventions lie on the software side of the invention rather than on the hardware side. The necessity of a hardware tied feature (manufacturing step e.g.) in the claim would be unreasonable towards applicants in the field of computer implemented inventions (CII).

As in point 16 of the decision, the legislator has deliberately refrained from defining the terms "technical" and "technology" in order not to preclude adequate patent protection being available for the results of future developments in fields of research which the legislator could not foresee. The body calls for definitions of the terms in view of modern technologies, to ensure successful industrial activity. If the law were to not allow such developments to be protected, not only would it apparently miss the essence of Art. 52(1) EPC, but also the basic principle of patent protection.

An example of how simulations achieve a technical effect is a digital twin, which is but a digital representation of an environment (e.g. building of T0484/14). Digital twins employ computer implemented algorithms/simulations which attempt to predict, e.g., the outage of a device on the basis of models. The quality of such inventions lies in how good the models predict the reality. The model is improved by determining, by a skilled person, the deviation of the predicted results from the real results, and using this in the next iteration.

Like Siemens, the Patentanwaltskammer stresses that such simulations play a role in sorting out inventions which are a failure, thus saving resources and potentially preventing human and environment catastrophes.

One of the reasons for the present Board deviating from T 1227/05 was its dismissal of a computer implemented simulation as a tool which “merely” assists an engineer in a cognitive process.

According to VPP, the measurement results of a simulation of a technical system or method still represent physical characteristics of the simulated technical entity, even if this may be interpreted by the skilled person in a cognitive manner.

That these results can also be captured in a cognitive manner cannot solely determine the technical character and the technical contribution of the measurement method. This would not change even if the results were to be used in fields relating to non-technical e.g. business or administrative purposes.

BDPA appears to favor the Board’s view towards the use of a simulation for pure theoretical studies or part of a computer game. In such cases, the technical character of the underlying system/process would be missing.

The present Board favors the reasoning of decision T 16670/07 to T 1227/05. BDPA explains why the these decisions came to different conclusions. In T 1227/05, the Board supposedly imparted more weight to the underlying technical system/process. A circuit as in T 1227/05 is technical without doubt. Therefore, analyzing the circuit to describe its mathematical model clearly results in a technical simulation.

According to BDPA, the decision T1670/07 never once considered the technical nature of the mathematical model, but focused on its implementation on a computer.

In contrast to the above decisions, T 0489/14, according to BDPA, identified merely the feature “computer-implemented” as technical in the claim. All other method steps were found to constitute a mental activity which can be performed with pen and paper. This was treated as being excluded from patentability, irrespective of the complexity of the problem.

Therefore, the analyzed subject matter in these decisions are different, finds BDPA. The subject matter of the respective claims is not commented upon.

Siemens uses the could-would approach to dispute the allegation that the invention constitutes a mental act as such which can be performed using a pen and paper.

For example, even if possible, due to the limited capacity of the human brain, it is highly improbable that the skilled person would in fact carry out a simulation mentally, e.g. as soon as the algorithm makes use of large amounts of data.

Therefore, a computer simulation which displays a predicted behavior of a real system in real time achieves a potential technical effect which, not even in principle, can be laid out using pen and paper.

Moreover, because of the overly broad manner of use of the terms “in principle” and “can”, every digital algorithm can be excluded from patentability as theoretically speaking, all of them can be mentally executed if one were to ignore the limits of practicality and capability. This contradicts the requirement that Art 52(3) EPC and Art. 52(2) should both be applied to assess an exclusion.

In fact, the exclusion of mental act as such from patentability is seen fundamentally wrong by Siemens, as an invention is a mental activity and it is established practice that the associated technical considerations can serve as basis for technical character. The technical considerations can also be considered as mental acts.

Siemens analyses whether a mental act as such allegation should then, and only then, be used as an exclusion criterion when the deciding factor of the subject matter of an application resides in this mental act.

An invention is a mental activity and it is established practice that the associated technical considerations can serve as basis for technical character.

If a simulation results in non-interpretable numbers and the skilled person first has to correlate and interpret them to determine whether there will be congestion in a building (applied to the present case), then such interpretation results from the mental act of the skilled person and not that of the simulation.

If the simulation has already interpreted those numbers and displays to the skilled person the predicted congestion, then the invention is, via the simulation, fully carried out. The skilled person should simply work with the simulated results. Even if this involves mental acts, it is immaterial to the working of the invention.

A monopolization of the mental activity, which should be prevented, does not happen in either case.

The VPP objects to the reasoning that the claim in dispute is a combination of a general purpose computer with non-technical features, and instead calls for the use of the established COMVIK (T 0641/00) approach to establish an inventive step.

It is indicated that if an undefined (interpreted as lacking information of the system in the specification) technical system were to be simulated, a corresponding modelling may be considered as a mental activity as such, thereby not contributing to the inventive step.

At the same time, if a defined technical entity were to be modeled, a technical contribution may arise from for example, a special manner of modelling (T1842/11) or if the modelling is coupled with the internal functioning of the computer (T1358/09).

According to VPP, the former applies to the present case. The specific type of micro modelling produces a movement pattern of pedestrians in a defined environment, and this contributes to solving a technical problem.

BDPA appears to be in consensus with VPP on taking the modelling into account.

For a controller to function without failure in a real environment, it is seen essential that the behavior of the to-be-controlled technical system be described using a mathematical model. If the development and analysis of the model involves inventive activity, the inventor or the successor in title should be rewarded. However, an implementation of a known or obvious model may merely involve finding a suitable program to implement it on a computer, and is thus patent ineligible.

A link to physical reality is of relatively less importance in the assessment of inventive step, as is whether the controller is used in a real process later on.

To conclude, both VPP and BDPA consider a simulation of a technical system to always possess a link to reality and always solve a technical problem. The importance of simulations in diverse technical fields like machine construction and wind turbulence in buildings is further stressed upon.

According to Siemens, a computer simulation indeed has technical effects which go beyond its implementation on a computer (Question 1, referral). These can lie in the non-realization of prototypes or products, which, according to the prediction of the simulation, are found to be not good, or not to function as expected, or can be replaced by better alternatives.

The Patentanwaltskammer states that the link to reality in a computer implemented simulation lies firstly in building a model based on a situation in real world. This link is followed by realization of a technical device/mechanism based on the model, which reproduces the real world. A technical effect is thus achieved, which goes beyond the mere implementation of the simulation on computer. The skilled person has to consider the technical principles of the underlying simulated system or process to achieve the effect.

Touching upon Art. 52(2) (a), (c) and (d) EPC, VPP adds that if a computer program, which may be used to execute the simulation, produces a technical effect, it should not be considered as a computer program as such under Art. 52(3) EPC.

With respect to mathematical methods employed in simulations, the inventive step may lie within the mathematical method. Decision BGH Flugzeugzustand GRUR 2015, 983 and T 2050/07 are cited.

A simulation of technical entity or a method produces copious amounts of numerical data. The characteristics of the simulated entity may be difficult to interpret using numerical data alone. Citing T 1185/13 to support presentation of such data, it is pointed out that the usefulness of a simulation can be supported significantly if results can be represented e.g. graphically. Such representation cannot be ignored as mere non-technical presentation of information.

Regarding simulation of non-technical entities, in the presence of other technical features in a mixed type claim, especially those which interact functionally to realize the simulated entity, a mere claim assessment as comprising “inherently non-technical subject matter” is seen as having less merit.

As answer to question 2, according to VPP, if a simulation makes use of technical principles underlying the simulated system or process, the relation to physical reality is simply made stronger. Simulations relating to non-technical entities/processes are not excluded from consideration.

BDPA and Patentanwaltskammer, on the other hand, appear to restrict a positive answer to question 2 to technical systems. The question to be assessed is whether the to-be-simulated system possesses a technical character.

Siemens tends to conclude that a limit for patentability of simulations can be reached when the simulation stops imitating how the simulated entity or method would behave in real world, and select random principles upon which the behavior of the simulated entity should be based, for example, those which defy the laws of physics.

Another limit for patentability of simulations may be a case where the behavior of an entity/method is simulated, which entity/method may itself be excluded from patentability, e.g. in business applications. The patentability of a computer simulation may then lie in the specific manner of technical implementation of the method on a computer, but not in the simulation.

Question 3 of the referral concerned the case where the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design. VPP does not view this as a condition for achieving technical contribution of a simulation, but that which strengthens the link of the simulation to physical reality. Similarly, BDPA sees no difference between a case where the simulation is used for verification of a design/process and to simulate a real process.

According to Siemens, a purpose limited patent protection involving embedding the simulation in a design verification can be a separate invention. This comes especially into consideration if the simulation is not novel or inventive over prior art, or alternately, for mixed type inventions in non-technological fields. Both the simulation and its incorporation in an application should therefore be patentable.

The Patentanwaltskammer shares a similar opinion for question 3, as according to them, any claimed step to a design process, e.g. a verification of a design may also contribute to a technical effect. Of course, this may be relatively irrelevant if the simulation itself is patentable.

FICPI (Federation of Intellectual Property Attorneys) considers important the context in which a simulation step is claimed in order to asset the technicality of the effect achieved by the simulation. In this way, a technical effect may be achieved when the simulation is based on technical principles underlying the simulated system wherein the underlying principles may as such be non-technical, as long as the simulation provides a technical effect in the relevant context.

This means that using a simplified model of a human pedestrian moving through a crowd and performing a simulation using such a model to determine the aggregated behavior of the crowd may not be technical as such, but the simulation step still makes a technical contribution in the particular context of designing a building.

According to FICPI, to draw a line where there is no longer direct connection to the physical world is considered artificial and the question is not whether the concept of simulation as such is technical, but rather what is the context of the actual simulation and the contribution of the simulation is said context.

The hammer analogy seems also to be favored by FICPI. A simulation is considered as just a tool, like a hammer, and it may be used for both technical and non-technical purposes. Like the physical world, a simulation model may be governed by well-defined laws grounded, via the implementation of the model on a computer, in the laws of nature.

EFPIA (European Federation of Pharmaceutical Industries & Associations) is concerned that a potential inconsistency in the application of law could create hurdles for the progress of technologies such as drug research and development.

The relevant criteria for assessing whether a claim to a computer-implemented simulation solves a technical problem should be the same as for any computer-implemented method.

Furthermore, according to T1227/05 a computer implemented simulation method is not a purely mental act. T1227/05 states (reasons 3.2.1) that: "while the invention may be preceded by a mental or mathematical act, the claimed result must not be equated with this act. The present claims relate to a simulation method that cannot be performed by purely mental or mathematical means”.

A technical purpose is attributed to the simulation method of T 1227/05 on the basis that an "adequately defined class of technical items" is simulated including "a circuit with input channels, noise input channels and output channels whose performance is described by differential equations" (reasons 3.1.1).

CIPA (Chartered Institute of Patent Attorneys) appears to be in consensus with EFPIA that T1227/05 gives explicit reasons why the claimed simulation method is not a purely mental act. Furthermore, there is often a distinction between the design phase (which may be cognitive), and the simulation phase (which is computer-implemented and not cognitive).

Moreover, CIPA does not accept that T1227/05 relies on "the greater speed of the computer-implemented method as an argument for finding technicality’. On the contrary, CIPA considers that T1227/05 is cautious regarding this issue (reasons 3.2.5): "a mere speed comparison is not a suitable criterion for distinguishing between technical and non-technical procedural steps.

T1227/05 considers technical purpose - e.g. a simulation that may be used for the evaluation of noise-affected circuits, wherein the simulation provides a technical effect by advancing this technical purpose. Following this, a computer-implemented simulation which is performed for a technical purpose cannot be denied a technical effect and the relevant criterion is whether the simulation serves a technical purpose.

According to CIPA, as T1227/05 is in the EPO guidelines and case law book and it has been followed in UK (Halliburton v Comptroller) and GE (Logikverifikation decision), the status quo should be maintained.

CIPA also raises concerns about question 1 (language too broad, for instance, simulation) and considers that a direct answer to Question 1 would shed no light on the "technical purpose” approach of T1227/05. Thus, CIPA considers question 1 should not be admitted.

IPO (Intellectual Property Owners Association) submitted that, as stated in T 1227/05, simulations perform technical functions typical of modern engineering work by providing a realistic performance prediction which allows to assert  the prototype's chances of success before building it. Moreover, the speed of the simulation method also allows a wide range of designs to be virtually tested thereby avoiding expensive circuit fabrication processes and reducing design time. There is no purely mathematical, theoretical or mental method that would provide complete and/or fast prediction of circuit performance under noise influences.

IBM also considers that the approach set out in T1227/05 focusing on the technical purpose of a claimed computer simulation to determine whether it had technical character is still valid thereby providing a consistent, practical way of determining patentability of inventions involving computer-implemented simulation. Also this approach is in line with the purpose of Art. 52 EPC as it refers to a technical purpose and requires that a claimed method is functionally limited to the technical purpose. In this way, a computer-based design tool is patentable, whereas a mere mental act carried out by an engineer operating the design tool is not.

IBM addresses also the requirement of a "direct link with physical reality" by arguing that “both decision T1227/05 and national case law have abandoned this requirement (see for example, in Germany: BGH X ZB 11/98, "Logikverifikation", and in the UK: Halliburton Energy Services Inc's Applications [2012] RPC 129) due to the changes on how technology is applied in engineering tasks. Computer-based tools are used to design products such as semiconductor chips. Such design tools are products themselves that should be protectable by patent.”

According to Dr. Martin Wilming, artificial intelligence is an “enabling technology” (following an EPO study which classifies 4IR inventions in “core technologies”, “enabling technologies” and “application domains”). In view of this, artificial intelligence is considered technical and useful for a technical purpose. According to this, a piece of artificial intelligence useful in a field of technology will involve the “further effect” as discussed in G 3/08.

Bentley Systems (BS) considers that the requirement of a direct link with physical reality is an “unduly high bar” and argues that the simulation having the potential to produce a technical effect should be enough. According to established EPO practice, when assessing inventive step for a claim directed to a computer program, the effect produced by the computer program is taken into account despite the fact that it might never run on a computer. Therefore, if a simulation could result in a technical effect in another entity, then like the computer program, it should be protectable.

In “Red Dove” (German Federal Court) an invention was defined as “requiring a technical teaching to methodically utilize controllable national forces to achieve a causal, perceivable result”. BS considers that the teaching is achieved by the simulator reflecting technical principles underlying the simulated process, and the result is the model representing a technical description of the process to be simulated and, potentially, the real-world process.

Moreover, a  new way of modelling pedestrians based on human interactions being also modeled as behaviors that can be observed and measured allowing to combine physical and human interactions provides a more realistic simulation. In this way, the model reflects technical considerations underlying the system being simulated.

IP Federation (IP) considers that a simulation is not a cognitive process because a product (or environment) produced based on the simulation is only one possible benefit of the simulation. But the avoidance of manufacturing a less effective product is also a technical benefit.

IP also states that in VICOM it was held that a physical entity may be “a material object but equally an image stored as an electric signal” and that a method for digitally filtering data is an abstract notion “so long as it is not specified what physical entity is represented by the data”. Thus, according to VICOM, the electrical signal is considered as a physical entity in certain circumstances (such as an image).

Phillips believes that decision T 1227/05 is correct because it considers clearly technical simulating the operation of a “technical arrangement” such as an electrical circuit to study its “technical behavior”.

Thus, according to Phillips, simulation of pedestrian crowd movement does not necessarily relate to technical subject matter as the problem solved by said simulation could be a commercial one, like designing a shopping path, in which case the invention would not be technical. However, if the problem solved by the simulation is restricted to a technical one such as the design of a building, then the invention is technical.

Following this reasoning, the answer of Phillips to the first question is a yes conditional to the claims being limited to a technical solution for a technical problem.

Altair IP is of the opinion that the BoA adopts a narrow interpretation of Art. 52(2) EPC against the broader interpretation that has prevailed for many years. The bar to overturn such established case law must be set up high taking into account the possible consequences for applicants.

Furthermore, Altair considers that requiring a direct link with reality for having a technical effect should be rejected and, as IP, they refer to VICOM, where an image was considered to represent a technical object. According to Altair, an image may be a simulated object and, taking a broader interpretation of said link with reality and following VICOM, a simulation could be as well considered as a technical object as it is a set of data stored within a computer having specific technical meaning.

Finally, Altair considers that the technical purpose of a simulation should be taken into account and, as IP, considers that not having to perform physical testing could be considered as a technical effect.

Bardehle believes that excluding simulation methods from patentability would contradict the objectives of the European Union as millions are being invested in the digitalization of domestic industry to make Europe a leading economic location in this area. Requiring claims to recite the result of the teaching in the physical world is considered based on an outdated understanding of what is a technical teaching.

Bardehle refers to the  Federal Court of Justice in Germany decision in “Rote Taube”, wherein a technical teaching was found not to be bound by the presence of objects belonging to the physical reality and wherein the term technical teaching was defined as “a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result”. Furthermore, the same decision also came to the conclusion that this definition is not static but can be modified according to technological development.

The same court, in its decision “Logikverifikation” confirmed that reciting a manufacturing step is not necessary in order that claims related to numerical simulations qualify as a technical teaching.

Moreover, several examples showing that technical considerations can be present outside of an object of the physical reality can be found in the jurisprudence of the EPO such as in T 769/92 (implementation of an UI in the form of a “transfer slip” was considered to not be only a mere act of programing but to require technical considerations on the part of the programmer before programing could start), in T 625/11 (simulation to establish a limit value for a nuclear reaction) or in T 471/05 (method for designing an optical system).

Finally, Bardehle considers that a technical character exists if the method is claimed in a concrete technical context such, for instance, if the claimed method is based on technical parameters.

 

Conclusion

The EPO's Enlarged Board of Appeal has scheduled public oral proceedings in case G 1/19 for 15 July 2020. Members of the media and the public will be able to live stream the proceedings over the internet.

It is safe to conclude that the decision of the Enlarged Board is eagerly awaited by many prospective applicants who wish to protect their AI or CII inventions in the contracting states of the European Patent Convention.

NLO shall be keeping track of the outcome of the oral proceedings. In the meantime, please feel free to get in touch with one of our attorneys if you have questions.