In its decision G0001/19, published yesterday, 10 March 2021, the EPO Enlarged Board ruled on certain questions referred to it in the field of computer implemented simulations.

 

The invention in question related to modeling of movement of pedestrians through a building and using such a model in the design of a building. The Enlarged Board accepted the case in order to seek uniformity in the application of the law relating to simulations of this nature or on the basis that it is a point of law of fundamental importance. Indeed, the decision affects computer simulations across a wide field, from the built environment to the design of semiconductors or the design of drugs.

 

In its decision, the Enlarged Board steered clear of any wider need to clarify whether a computer-implemented process solves a technical problem, e.g. by going beyond the implementation of the process on a computer. The Board said is it never possible to give an exhaustive list of positive or negative criteria for such assessment, and endorsed the well-established COMVIK approach. (In such an approach, a feature is only considered for inventive step if and to the extent that it contributes to technical character.)

 

Readers may be relieved that the Enlarged Board distanced itself from the somewhat notorious “Rote Taube” decision of the German Bundesgerichtshof, placing that decision in its time, and saying “any definition of a technical invention may have to be extended in the course of time to accommodate new technical or scientific developments or reflect societal changes”.

 

Focusing therefore on numerical simulations, the Enlarged Board recognized that these may reflect non-technical aspects, such as human behavior. These may be described, for example, by game theory models, and the Board did not want to rule out patenting any particular group of numerical simulations. The Board saw no legal basis for such discrimination.

 

The Enlarged Board ruled that whether a numerical simulation is based at least in part on technical principles that underlie the simulated system or process is immaterial (it is “neither a sufficient nor a necessary condition”).

 

Whether this leads to the conclusion that a design process based on a patentable simulation is also patentable is left to the facts of each case, applying the COMVIK criteria. A design process is normally a cognitive process (and therefore excluded from patentability), but a design process that includes a patentable simulation needs no special consideration and may depend on the wording of the claim. After all, a claim may be to a process of design without even using that term.

 

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