G1/19 On Patents And Simulations ' How May Industry Feel About The Enlarged Board's Decision?

• Published date: 26 March 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Gill Jennings & Every
• Author: Mr Scott King

We have kept a close eye over the past year on G1/19 the referral to the EPO's Enlarged Board of Appeal in relation to the patentability of simulations. Now that the decision has issued, we thought it would be worth trying to predict how industry may feel about the Enlarged Board's decision. To do this we have taken a look at the comments in the amicus curiae briefs submitted by all sorts of players who have an interest in patentability of simulations, from companies such as Philips International B.V. to Industry bodies such as CIPA.

Summary of Appeal

To begin with let's refresh ourselves with what the referral is about. The invention in the appealed application related to a computer implemented method used to simulate the movement of a crowd of pedestrians through an environment. The purpose of the simulation is asserted to aid in designing a venue such as a railway station or a stadium.

The Board of Appeal were of the opinion that the invention lacked an inventive step stating that the claimed steps do not provide a technical effect beyond the implementation of the method on the computer. The applicant argued against this reasoning citing a previous Board of Appeal case T 1227/05 (Circuit simulation I/Infineon Technologies). The Board of Appeal accepted the applicant's arguments that the present application was analogous with the case in T 1227/05. Despite the similarity between the two cases the Board of Appeal were not convinced by the reasoning given in T 1227/05 and referred the following questions to the Enlarged Board of Appeal for clarification:

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. 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?
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?

Views expressed in the Amicus Curiae Briefs

Through submitting amicus curiae briefs third parties, who are not...