In this chapter, various case law is discussed in depth by the Enlarged Board of Appeal in G 1/19. In contrast to chapter 3 “Case law on the patentability of simulations”, this case law is discussed by G1/19 based on the findings of points 24 to 101. The following information is based on points 127 to 135 of G 1/19.
The Enlarged Board in G1/19 disagrees with some points in the T 1227/05
Decision T 1227/05 is clearly the decision that was most often quoted in the course of the present proceedings. The application in issue concerned computer-implemented methods for the numerical simulation of electronic circuits subject to 1/f noise, the solution being based on the notion that 1/f noise can be simulated by feeding suitable random numbers into the circuit model. In the deciding board’s view, the simple generation of the random numbers and the possibility of calculating them separately, before the start of the circuit simulation, provided for a resource-efficient computer simulation (Reasons, point 1.3). In its analysis under Article 56 EPC, the board explicitly relied on the COMVIK approach, finding that the simulation of a circuit subject to 1/f noise constituted an adequately defined technical purpose for a computer-implemented invention “provided that the method is functionally limited to that technical purpose” (Reasons, point 3.1). In view of the method’s functional limitation to the simulation of a noise-affected circuit, the board came to the conclusion that such simulation could be considered to be a functional technical feature (Reasons, points 3.1.1 and 3.1.2). The board also made clear that the metaspecification of an (undefined) technical purpose could not be considered adequate. Reference was made to originally filed claim 4 directed to a process for the simulation of a technical system subject to 1/f noise, which claim was not maintained on appeal (see Reasons, point 3.1.1).
The Enlarged Board understands that, in this particular case, the board concluded that the effect of the claimed simulation could be accepted as a technical effect. Emphasis was put on the “specific” and “limited” purpose of the output of the claimed simulation methods, which was considered to have technical character for the purposes of Article 52 EPC (see the heading of Reasons, point 3). In the context of its conclusion, the board made no explicit reference to its above-mentioned finding that the claimed method provided for a resource-efficient computer simulation.
In the Enlarged Board’s view, calculated numerical data reflecting the physical behaviour of a system modelled in a computer usually cannot establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflects the behaviour of a real system underlying the simulation.
Only in exceptional cases may such calculated effects be considered implied technical effects (for example, if the potential use of such data is limited to technical purposes, please see Computer Implemented Inventions @ the EPO: (10) "Virtual or calculated technical effects"). In this context, it is not the Enlarged Board’s role to re-assess decision T 1227/05, which was taken in the specific circumstances of the case, or to judge whether the position envisaged by the referring board would diverge from T 1227/05. As noted in point 127 of G1/19, the board in T 1227/05 did not rely for its decision solle on its findings that the simulated system was a technical system and that the system could only be understood and modelled by relying on technical considerations.
Method for establishing a limit value an operational parameter of a nuclear reactor
Case T 625/11 concerned a method for establishing by a computer system at least one limit value for at least one operational parameter of a nuclear reactor, which method included a simulation step and resulted in numerical value(s) for one or more limit values for e.g. global power P of the reactor. The board discussed in detail the technicality requirements of the COMVIK approach, taking into account arguments both for and against accepting that the calculation of the limit values gave a technical character to the claimed invention (Reasons, points 7 and 8.4). One of the main negative arguments discussed was that claims which did not include technical applications of the calculated values would encompass uses for non-technical purposes, such as uses by public authorities and uses for educational purposes (see Reasons, points 7.2.6 and 8.1). As a consequence, the claimed subject-matter could not be considered inventive over the whole scope of the claim (see Reasons, point 7.2.6, referring to T 939/92; see also Computer Implemented Inventions @ the EPO: (6) "Technicality of computer-implemented inventions using the two-hurdle approach") above.
However, the board in T 625/11 considered that the relevant questions were the same as in T 1227/05 and ultimately followed the conclusions of that decision, accepting that the calculated limit values for the operation of a nuclear reactor conferred a technical character to the invention (Reasons, point 8.4).
Further decisions regarding simulations
Decision T 625/11 also addressed the criterion of the technical or non-technical nature of the simulated system in issue with reference to decisions T 531/09 and T 1265/09 (both involving simulations), which the board distinguished from T 1227/05 on the basis of the non-technical nature of the objects simulated in those cases (Reasons, point 8.3).
T 531/09 concerned a computer system for simulating “a security checkpoint for screening persons and their carry-ons”, for example at an airport. The deciding board found that the technical delays modelled in the context of the checkpoint simulations were non-technical (i.e. not related to the technical details of x-ray devices or metal detectors used at the checkpoint) and that the claimed process was therefore a non-technical process (Reasons, points 4 and 5).
Decision T 1265/09 concerned computer-implemented methods of determining an efficient schedule for a plurality of scheduled agents in a telephone call center. The effect of an efficient schedule was found to be a business aim which did not necessarily imply any technical effects (Reasons, point 1.4).
It appears that in both decisions the negative assessment under Article 56 EPC was (or could have been) based on the lack of a technical effect by the simulation rather than on the non-technical nature of the simulated system.
A further example in this context is decision T 1798/13, which pertains to a method for forecasting a value of a weather-based structured financial product based on the input of real weather data and calculations of a weather forecast. The deciding board held that the weather was not a technical system but a physical system that could be modelled to show how the system worked, and did not accept the appellant’s argument that improving the reliability and predictability of weather forecast data was a technical problem (Reasons, points 2.10 and 2.11). It may be added that while improved weather forecasting can certainly not contribute to the technical character of an invention if the claim is directed to the forecasting of a value of a financial product, it probably can do so if the weather forecasting data is used, for example, to automatically open or close window shutters on a building. T 1798/13 also mentioned T 2331/10, which discussed, inter alia, whether the operation of wind turbines on the basis of weather forecasts served technical or commercial purposes.
As already mentioned in the introductory parts of the decision G1/19, the issue of the patentability of simulations as such has not arisen very often, partly because it may be avoided by claiming steps which clearly confer technical character to the invention. Of the cases in which the issue has arisen, T 625/11 followed T 1227/05, while others diverged from these two cases (see e.g. T 2331/10, Reasons, point 5.4).
The functionally limitation of a simulation to a technical purpose should not be taken as a generally applicable criterion of the COMVIK approach
The Enlarged Board agrees with the findings of T 1227/05 and T 625/11 if they are understood as being that the claimed simulation processes in those particular cases possessed an intrinsically technical function. However, there are rather strict limits for the consideration of potential or merely calculated technical effects according to the COMVIK approach (please see Computer Implemented Inventions @ the EPO: (8) "Direct link with physical reality" and Computer Implemented Inventions @ the EPO: (11) "Criterion of a "tangible effect""). The often-quoted criterion of T 1227/05 that the simulation constitutes an adequately defined technical purpose for a numerical simulation method if it is functionally limited to that purpose should not be taken as a generally applicable criterion of the COMVIK approach for computer-implemented simulations, since the findings of T 1227/05 were based on specific circumstances which do not apply in general.
Case law regarding simulations claimed as part of a design process
The Enlarged Board has not identified any case law on computer-implemented simulations claimed as part of a design process (referred question 3). However, case law referring to design processes, in particular decisions T 453/91 and T 471/05, was cited in the present proceedings. In the first decision, the method claims found to be allowable were to methods of manufacturing semiconductor chips comprising two steps:
a) designing and
b) manufacturing the chip (see claims 3 and 4 of patent EP 0 271 596).
In the terms of the present referral, the claims were not directed to design methods “as such”. The inclusion of a manufacturing step would of course be an argument in favour of patentability according to the – subsequently developed – COMVIK approach. The second decision, T 471/05, found a method for designing an optical system using an optics design program to be patentable (see claim 1 of patent EP 0 932 845). The reference to implementation by means of a computer program overcame the objections raised under Article 52 EPC (Reasons, point 4.1). However, in the context of inventive step, no reference was made to the technical or non-technical nature of the method and its steps, or otherwise to the COMVIK approach (Reasons, point 4.2). This decision is therefore of limited relevance to the referred questions. As far as referred question 3 is concerned, the Enlarged Board therefore sees no existing case law which needs to be considered.
National decisions
In the course of the referral proceedings, reference was made to certain national decisions, in particular the German Federal Court of Justice’s “Logikverifikation” decision of 13 December 1999 (Case X ZB 11/98) and Halliburton v Comptroller-General of Patents [2011] EWHC 2508 (Pat) of the High Court of England and Wales (see Reasons, points 46 and 48 of the referring decision).
However, as the referred questions are only understood in the framework of the COMVIK approach, which was specifically established in the case law of the boards of appeal and on which the national decisions are not based, the Enlarged Board does not consider it appropriate to address them in detail.