G1/19 Computer Simulation Patentability
The highly anticipated Decision relates to a patent application directed to a simulation implemented on a computer. According to the Decision, a simulation is “an approximate imitation of the operation of a system or process on the basis of a model of that system or process. In the case of a computer-implemented invention, the model exists only in the computer and the simulation allows the functioning of the modelled system or process to be assessed or predicted”.
Answers to the three questions referred to the Board of Appeal
Question 1: Can a 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 simulation is claimed as such?
Answer 1: YES. (No group of CIIs can be a priori excluded from patent protection.)
Question 2, part A*: If yes, what are the criteria for determining whether the simulation solves a technical problem?
Answer 2, part A: The Decision did not answer this question explicitly. The criteria appear to be the same as that for any other computer-implemented invention, and COMVIK is applicable.
Question 2, part B: Is it sufficient that the simulation is based (at least partly) on technical principles underlying the simulated system or process?
Answer 2, part B: NO. (It is neither sufficient nor necessary.)
Question 3: What are the answers to the above questions if the simulation is claimed as part of a design process, in particular for a verifying a design?
A3: THE SAME. (No need for special rules if a simulation is claimed as part of a design process.)
*Question 2 was split into two parts for consideration by the Board.
Implications and practice points
In summary, nothing has really changed. In the Decision, the Enlarged Board has provided an excellent summary of relevant case law, particularly COMVIK, T 1227/05 (the electrical noise case), and T 625/11 (the nuclear reactor case). The Board explains how COMVIK is applicable, in the context of the other case law, to conclude that claims to simulations are to be treated like any other computer-implemented invention.
This is good news for applicants, since claims to computer-implemented simulations as such may be patentable, depending on the circumstances and how the claim is written. It is also good news for patent attorneys, in that the considerations for drafting and prosecution applications to computer-implemented simulation inventions are the same as those computer-implemented inventions with which we are already familiar.
Just as in the case of any other invention being prosecuted before the EPO, the presence of inventive step stands on both whether and how a claim feature contributes to the solution of a technical problem. As always, there remains a focus on the all-important technical character and purpose of the invention.
When drafting a claim to a simulation, inventors and patent attorneys must consider where the simulation’s links to reality lie and ensure that those links are at least implicitly defined in the claim as effects or purposes of the invention. Interestingly, the Decision says (see paragraph 37) that you do not necessarily have to limit the claim to include feature directly linking the features of the simulation to reality, pointing out that T 625/11 claims the determination of a limit value of an operating parameter without claiming the use of the limit value. Having said that, I would always ensure that such implementation details are clearly and unambiguously set out in the description, and likely consider them appropriate for dependent claims.