In the interlocutory decision T 0489/14 the Board of Appeal formulates questions to be referred to the Enlarged Board of Appeal. The main reason is that the Board of Appeal intended to deviate from the interpretation and explanations of the EPC given on a point in decision T 1227/05 so that the uniform application of the law is at issue. In the following the reasons of the interlocutory decision points 3 to 28 are shown, in order to understand the reasons for the referring questions.
Method of modelling pedestrian crowd movement (reasons 3)
Claim 1 of the main request relates to a computer-implemented method of modelling pedestrian crowd movement in an environment. The method simulates a plurality of pedestrians as they move through the environment. For each pedestrian, a “preferred step” is determined on the basis of a pedestrian-specific profile, a provisional path through a model of the environment and certain “dissatisfaction”, “inconvenience” and “frustration” cost functions, and it is furthermore determined whether the step is feasible in view of obstructions in the neighbourhood of the pedestrian and the pedestrian’s personal space.
Procedural steps performed without any technical means (reasons 4)
Ignoring for a moment the feature “computer-implemented”, claim 1 specifies a series of procedural steps which could be performed independently of any specific technical means. They can be carried out with the help of a computer, but also – at least in principle – exclusively mentally. In other words, without the feature “computer-implemented”, the scope of claim 1 encompasses methods for performing mental acts as such, which are excluded from patentability under Article 52(2) and (3) EPC.
In this context the Board notes that, as a matter of practical reality, someone carrying out the prescribed sequence of steps for a larger number of pedestrians and a more complicated environment may need some help, for example in the form of pencil and paper, to keep track of intermediate calculation results or to visualise the end results. But complexity of an activity is not normally considered to be sufficient to escape the mental act exclusion (see e.g. decision T 309/10 of 19 June 2013, reasons 16).
Method that can be performed mentally is still excluded even if it can be said to involve technical considerations (reasons 5)
The appellant argued that the steps of claim 1 were in fact technical because they dealt with physical concepts, such as direction and length, which could be expressed in terms of physical quantities. However, a method that can be performed mentally is still excluded even if it can be said to involve technical considerations. In opinion G 3/08 (OJ EPO 2011, 10), the Enlarged Board confirmed this when it explained that no contradiction existed between the statement that programming – more precisely, the intellectual activity of working out what are the steps to be included in a computer program – always involved technical considerations and the statement that programming was a mental act excluded from patentability (reasons 13.3). The Enlarged Board drew the following analogy:
"Designing a bicycle clearly involves technical considerations (it may also involve non-technical, e.g. aesthetic, considerations) but it is a process which at least initially can take place in the designer's mind, i.e. it can be a mental act and to the extent that it is a mental act would be excluded from patentability, just as in the cited cases T 833/91, T 204/93 and T 769/92 (cf. also T 914/02, General Electric, dated 12 July 2005, Reasons, point 2.3 and T 471/05, Philips, dated 06 February 2007, Reasons, points 2.1 and 2.2)."
Limitation to a “computer-implemented” method (reasons 6)
The presence of non-technical features in claim 1 does not mean, however, that its subject-matter is excluded from patentability under Article 52(2) and (3) EPC as a “non-invention”. The limitation to a “computer-implemented” method ensures that any embodiment of the claimed invention involves the use of a computer, which is undoubtedly a technical means. It is well established in the jurisprudence of the boards of appeal that a method claim involving technical means is not excluded from patentability (see decision T 258/03, OJ EPO 2004, 575, reasons 4).
This narrow interpretation of the exclusions of Article 52(2) and (3) EPC is based on the principle that whether particular subject-matter is excluded is to be decided without regard to the prior art. In decision G 2/07 (OJ EPO 2012, 130), the Enlarged Board confirmed this principle when it held that the same should apply to the delimitation of essentially biological from patentable processes for the production of plants or animals (reasons 6.4.1).
Inventive step can be based only on the technical part of the invention (reasons 7)
On the other hand, the jurisprudence also holds that inventive step can be based only on the technical part of the invention, i.e. on those features that contribute to the solution of a technical problem; features that cannot be considered as contributing to the solution of any technical problem by providing a technical effect have no significance for the purpose of assessing inventive step (see T 641/00, OJ EPO 2003, 352, reasons 4 to 6; G 3/08, reasons 12.2.1 and 12.2.2). Non-technical features are therefore to be taken into account in the assessment of inventive step to the extent that they interact with the technical subject-matter of the claim to solve a technical problem or, equivalently, to bring about a technical effect (see G 1/04, OJ EPO 2006, 334, reasons 5.3; T 154/04, OJ EPO 2008, 46, reasons 5, under (F), and 13 to 15).
Implementation on a computer (reasons 8)
In the present case, the method steps of claim 1 interact with the feature requiring the method to be “computer-implemented” at least to the extent that the method steps are to be implemented on a computer. In some cases, the problem of implementing a non-technical method on a computer may have a non-obvious solution, namely if the implementation requires non-trivial technical features. In such cases, those technical features are essential features of the invention and thus have to be included in the claim in order to comply with Rule 43(1) and (3) EPC. This is not such a case: the implementation of the steps of claim 1 is straightforward, requiring only basic knowledge of data structures and algorithms.
In other cases, the implementation of a non-technical method on a computer may in itself be a straightforward programming exercise, but the design of the method may still have been motivated by technical considerations concerning the internal functioning of the computer, resulting in a specific technical effect being achieved when the method is run on the computer (see e.g. decision T 2330/13 of 9 May 2018, reasons 5.7.9 and 5.7.10). In those cases, the technical problem to be solved cannot be formulated as being how to implement the non-technical method on a computer but has to be reformulated, essentially, as being how to achieve the effect. But this is not one of those cases either, as the steps of claim 1 directly reflect the simulation to be performed, and no considerations relating to the internal functioning of a computer are alluded to in the application or can otherwise be recognised by the Board.
Hence, if its implementation on a computer were to be considered the only technical aspect of the claimed method, the conclusion would be that the method lacks inventive step over a known general-purpose computer.
Further technical effect (reasons 9)
It therefore has to be assessed whether further technical aspects can be identified in the subject-matter of claim 1. In this respect, the appellant submitted that the invention produced a technical effect in the form of “a more accurate simulation of crowd movement”. Since a general-purpose computer does not inherently simulate crowd movement at all, the appellant’s submission amounts to the argument that the computer-implemented simulation of crowd movement qualifies as a technical effect and that the steps of claim 1 contribute to that effect.
The Board observes that claim 1 does not explicitly specify what information is ultimately provided to the user of the method, but it accepts that claim 1 provides information about the simulated movement of pedestrians through a modelled environment.
Numerically calculating the trajectory of an object as determined by the laws of physics not a technical task producing a technical effect (reasons 10)
As to the technicality of simulating crowd movement, the appellant argued that simulating the movement of pedestrians yielded results which were no different from those obtained by modelling an electron using numerical methods. Like the simulation of an electron, the claimed simulation of the movement of pedestrians was based, at least in part, on the laws of physics.
The Board does not disagree with these observations but is not convinced that numerically calculating the trajectory of an object as determined by the laws of physics is in itself a technical task producing a technical effect.
Direct link with physical reality (reasons 11)
In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity. Such a link is not present where, for example, the parabolic trajectory followed by a hypothetical object under the influence of gravity is calculated. Nor can the Board detect such a direct link in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment, which is what is claimed here. In fact, the environment being modelled may not exist and may never exist. And the simulation could be run to support purely theoretical scientific investigations, or it could be used to simulate the movement of pedestrians through the virtual world of a video game.
In this context, the Board notes that the Enlarged Board of Appeal in decision G 2/07, reasons 6.4.2.1, stated that “[h]uman intervention, to bring about a result by utilising the forces of nature, pertains to the core of what an invention is understood to be”. It appears to the Board that using a computer to calculate the trajectories of hypothetical pedestrians as they move through a modelled environment does not utilise the forces of nature to bring about a result in any way different from using a computer to perform any other type of calculation.
Decision T 1227/05 (reasons 12)
The Board’s analysis so far would lead it to conclude that the subject-matter of claim 1 indeed lacks inventive step over a known general-purpose computer. However, the appellant also relied on decision T 1227/05, arguing that modelling pedestrian crowd movement in an environment constituted an adequately defined technical purpose for a computer-implemented method.
Decision T 1227/05 (reasons 13)
In case T 1227/05, the deciding board came to the conclusion that the claimed numerical simulation of a noise-affected circuit described by a model featuring input channels, noise input channels and output channels and a system of differential or algebroid differential equations was a functional technical feature.
The board was satisfied that the claim was limited to the simulation of “an adequately defined class of technical items” (“eine hinreichend bestimmte Klasse von technischen Gegenständen”), where “adequately defined” appears to be essentially a clarity requirement (reasons 3.1 and 3.1.1). The board’s reasons for finding the simulation to be a technical process are given in point 3.2.2 of the reasons, which reads as follows:
"Die Simulation erfüllt technische Aufgaben, die für eine moderne Ingenieurtätigkeit typisch sind: Die Simulation erlaubt eine realitätsnahe Vorhersage des Verhaltens eines entworfenen Schaltkreises und unterstützt dadurch dessen Entwicklung im Idealfall so genau, dass vor einer Fertigung abgeschätzt werden kann, ob der Bau eines Prototyps Erfolg verspricht. Die technische Bedeutung dieses Ergebnisses vervielfacht sich mit zunehmender Geschwindigkeit des Simulationsverfahrens, denn damit kann eine umfangreiche Klasse von Entwürfen virtuell getestet und auf erfolgversprechende Kandidaten durchsucht werden, bevor mit einer aufwendigen Herstellung von Schaltkreisen begonnen wird.
Ein vorausschauender Test eines komplexen Schaltkreises und/oder eine qualifizierte Auswahl aus einer Vielzahl von Entwürfen wäre ohne technische Hilfe nicht oder nicht innerhalb annehmbarer Zeit möglich. Das computergestützte Simulationsverfahren zum virtuellen Ausprobieren stellt somit ein praktisches und praxisrelevantes Werkzeug des Elektroingenieurs dar. Dieses Werkzeug ist gerade deshalb wichtig, weil in der Regel keine rein mathematische, theoretische oder gedankliche Methode existiert, die eine vollständige und/oder schnelle Voraussage des Schaltkreisverhaltens unter Rauscheinflüssen liefern würde."
[The English translation in the Official Journal reads: "Simulation performs technical functions typical of modern engineering work. It provides for realistic prediction of the performance of a designed circuit and thereby ideally allows it to be developed so accurately that a prototype's chances of success can be assessed before it is built. The technical significance of this result increases with the speed of the simulation method, as this enables a wide range of designs to be virtually tested and examined for suitability before the expensive circuit fabrication process starts.
Without technical support, advance testing of a complex circuit and/or qualified selection from many designs would not be possible, or at least not in reasonable time. Thus computer-implemented simulation methods for virtual trials are a practical and practice-oriented-part of the electrical engineer's toolkit. What makes them so important is that as a rule there is no purely mathematical, theoretical or mental method that would provide complete and/or fast prediction of circuit performance under noise influences."]
Comparison of pedestrian simulation with simulation of T 1227/05 (reasons 14)
In the present case, the method of claim 1 can be viewed as a method of testing – by simulation – a modelled environment with respect to pedestrian crowd movement. Viewed in this way, there is an evident analogy with a method of testing – by simulation – a modelled circuit with respect to noise influences. Just as the simulation method claimed in T 1227/05 can be used to predict the performance of a designed circuit in the presence of noise before it is built, so too can the simulation method claimed here be used to predict the performance of a designed environment in the presence of pedestrians before it is constructed. (The claims in both cases refer to a “modelled” rather than a “designed” circuit and environment.)
Although the term “environment” is broad, the claim is limited to the simulation of environments through which pedestrians move and which have fixed obstacles. The Board considers that such environments, when they exist in physical reality, are technical and that an environment’s “behaviour” when a crowd of pedestrians moves through it, for example the rate at which pedestrians can pass through the environment, is a technical property of the environment, not unlike the ability of a roof to drain rainwater. While it is true that the movement of a pedestrian is determined to a large extent by subjective decisions taken by the pedestrian, ultimately the pedestrian’s movement cannot fail to obey the laws of physics: a pedestrian cannot move through a wall or through other pedestrians.
Designing a train station that can handle a million people passing through it per day or a building that can be evacuated within a matter of minutes is primarily the work of an engineer, even if the insights of a behavioural psychologist can be of assistance.
As noted above, at least in principle the calculations underlying the simulation of pedestrian crowd movement as claimed here can be performed purely mentally; the role of the computer is that of ensuring satisfactory and reliable performance. But the same can be said of the method considered in T 1227/05. In both cases, the practical usefulness of the simulation method increases with the speed at which it is executed, as a greater speed allows a wider range of designs to be virtually tested and examined for suitability before the expensive manufacturing or construction process starts. In both cases, advance testing of a complex circuit or environment or an appropriate selection from many designs would not be possible within a reasonable time without computer support.
Board is not convinced by the reasoning of T 1227/05 (reasons 15)
In sum, the Board agrees with the appellant that decision T 1227/05 supports his case. However, the Board is not fully convinced by the decision’s reasoning. Its doubts are twofold.
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First, although a computer-implemented simulation of a circuit or environment is a tool that can perform a function “typical of modern engineering work”, it assists the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behaviour of the virtual circuit or environment designed. The circuit or environment, when realised, may be a technical object, but the cognitive process of theoretically verifying its design appears to be fundamentally non-technical.
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Second, the decision appears to rely on the greater speed of the computer-implemented method as an argument for finding technicality. But 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 (see e.g. decision T 1670/07 of 11 July 2013, reasons 9).
Lack of a direct physical effect on the real world (reasons 16)
Decision T 1227/05 indirectly addresses the claimed simulation method’s lack of a direct physical effect on the real world in point 3.4 of its reasons, where decision T 453/91 of 31 May 1994 is discussed. In that case, the deciding board had insisted on the addition of a step of “materially producing the chip so designed” to a method for designing a chip, because the claims rejected by the examining division concerned methods that could be interpreted as delivering a mere design which did not exist in the real world and which could or could not become a real object (see T 453/91, reasons 5.2).
The board which decided T 1227/05 acknowledged the tension with decision T 453/91. It pointed out that industrial simulation methods were becoming more and more crucial to technological progress and that, in a globally distributed industry, development and production were becoming increasingly separated, both materially and geographically. It therefore considered specific patent protection to be appropriate for numerical development tools designed for a technical purpose (reasons 3.4.2).
There is no doubt that the significance of numerical development tools has increased even more since case T 1227/05 was decided, yet the Board is hesitant to base its decision on policy considerations relating to the appropriate scope of patent protection that have not been expressed by the legislator and have in fact arisen only since the relevant provisions of the EPC were enacted (the Diplomatic Conference for the revision of the EPC in 2000 not having materially changed them). The Board is aware that the legislator deliberately refrained from defining the terms “technical” and “technology” in order not to preclude adequate protection being available for the results of future developments in fields of research which the legislator could not foresee (cf. decision G 2/07, reasons 6.4.2.1), but it sees a difference between the emergence of a new field of innovation and a change in the perceived significance of an existing field.
T 1227/05 is a well known case law (reasons 17)
Nevertheless, in view of the important role that numerical development tools and in particular computer-implemented simulations play nowadays in the development of new products, legal certainty in respect of the patentability of such tools is highly desirable. Although the Board would tend to consider the subject-matter of claim 1 of the main request to lack inventive step over a general-purpose computer, it recognises that the approach developed in case T 1227/05 suggests a different finding. That approach has so far not been adopted in a great many decisions of the boards of appeal, but it is the approach which currently prevails in the jurisprudence (see Case Law of the Boards of Appeal, 8th edition, 2016, I.A.2.4.3, under f)). It is also included in Part G, Chapter II, 3.3.2, of the Guidelines for Examination in the EPO (November 2018).
The case would have to be remitted (reasons 18)
Were the Board to follow decision T 1227/05, it would have to acknowledge that some or all of the steps of the simulation method of claim 1 contribute to a technical effect of the invention and could thus not be ignored when assessing inventive step. It would hence be necessary to compare the invention with prior art other than a general-purpose computer. Such prior art is available but was not considered in the decision under appeal. The Board would therefore remit the case to the Examining Division for further prosecution.
Reasons for the referred questions (reasons 19)
The present case therefore requires a decision to be taken on – to put it in general terms for now – the patentability of simulation methods. This is a point of law which relates to the interpretation of Articles 52(2) and (3) and 56 EPC and cannot be answered directly and unambiguously by reference to the EPC, i.e. it is a point of law of fundamental importance (cf. decision G 1/12, OJ EPO 2014, A114, reasons 10). The answer is important not just for the present case but for a potentially large number of cases involving computer-implemented simulations (see, for example, the decisions discussed in points 38 to 41 below, which were taken by four other organisational boards of appeal). Moreover, the Board at present intends to deviate from the interpretation and explanations of the EPC given on this point in decision T 1227/05 so that the uniform application of the law is also at issue. The Board further notes that the considerations necessary for settling the point of law are likely to help clarify the meaning of Article 52(2) and (3) EPC and its interaction with Article 56 EPC more generally. The Board therefore considers that it should refer the point of law to the Enlarged Board of Appeal in the form of the questions formulated below.
Questions to be referred (reasons 20)
Before formulating its questions, the Board will briefly recapitulate its position.
In the assessment of inventive step of an invention involving both technical and non-technical features, the non-technical features are to be taken into account only to the extent that they interact with the technical features to solve a technical problem/produce a technical effect over the prior art. In the case of the computer-implemented method of claim 1, it is not evident that the non-technical method steps interact with the technical features to produce a technical effect going beyond the straightforward implementation of the method on a computer. The crucial question is whether, starting from a known general-purpose computer as the closest prior art, the computer-implemented simulation achieved by the method of claim 1 can itself be regarded as a technical effect for the purpose of assessing inventive step. The Board would tend to answer this question in the negative for the reasons given in point 11 above. At the same time, as set out in point 14 above, it considers the present case to concern a computer-implemented simulation that, according to decision T 1227/05 (but contrary to the Board’s view), would constitute a functional technical feature.
Considerations re the first questions (reasons 21)
One point to consider is the scope of the term “simulation”. In a strict sense, 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 simulation, the model exists only in the computer and the simulation allows the functioning of the modelled system or process to be assessed or predicted.
The Board notes that the answers or reasons which may be given by the Enlarged Board may apply to a broader class of computations. In particular, there may be no ground to distinguish between simulating, i.e. approximately imitating, the operation of a system based on a model of the system and otherwise using a model to assess or predict the functioning of the system.
Another class of computations to which the answers or reasons given by the Enlarged Board could potentially apply is suggested by the “Logikverifikation” decision of the German Federal Supreme Court, which is discussed in point 46 below and which could be understood as holding that the claimed verification, based on technical considerations, of aspects of a model or a design makes a technical contribution if the verification can serve as an intermediate step in the process of developing and manufacturing a technical product.
Since the computer-implemented simulation of present claim 1 is a simulation in the strict sense, the Board will limit its questions accordingly.
First question (reasons 22)
Hence, the first question to be referred to the Enlarged Board is:
"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?"
Considerations re the second question (reasons 23)
If the Board’s position that a technical effect requires a direct link with physical reality is not correct, the question arises as to what is required of a computation for it to produce a “technical effect” for the purpose of assessing inventive step under the EPC. The exclusion by Article 52(2)© and (3) EPC of “programs for computers as such” seems to signify that not all computations produce technical effects.
In the case of a computer-implemented simulation, decision T 1227/05 requires that the simulation concerns an “adequately defined class of technical items”. In this Board’s reading of that decision, the requirement “adequately defined” (“hinreichend bestimmt”) is a clarity requirement. Indeed, merely limiting the claim to the simulation of a “technical system” was said to result in an inadequate “metaspecification”, in conflict with Article 84 EPC (reasons 3.1.1).
Nevertheless, it appears to the Board that something more is needed than a (clear) limitation to simulated items that are technical. For example, decision T 531/09 of 3 May 2012 concerned the simulation of a security checkpoint which included technical equipment such as a metal detector and an X-ray device. The deciding board took the view, however, that the claimed simulation in that case was not technical because the metal detector and the X-ray device were not modelled any differently from any of the non-technical tasks at the checkpoint, namely in terms of estimated queuing delays. Several other decisions also appear to have read a further condition (i.e. a substantive condition unrelated to the issue of clarity) into the requirement of T 1227/05 that the simulation concerns an “adequately defined class of technical items” (see e.g. decision T 1806/07 of 6 March 2012, reasons 3.3 to 3.5, and the remaining decisions discussed in points 38 and 41 below).
If the answer to the first question is yes, the Board is inclined to consider it still to be a necessary condition for a computer-implemented simulation of a technical system or process to produce a technical effect that the simulation reflects technical principles or considerations underlying the process or system being simulated. As explained in point 14 above, the Board considers that the simulation of present claim 1 is in fact based, at least in part, on technical principles underlying the process being simulated. However, the Board is not certain that this condition would be sufficient and that it corresponds to how decision T 1227/05 has been interpreted in later decisions.
Second question (reasons 24)
Thus the second question to be referred is:
"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?"
Considerations re the third question (reasons 25 to 27)
A negative answer to the first question would mean that the subject-matter of claim 1 of the main request lacks inventive step over a known general-purpose computer. The same would apply if the answer to the second question includes criteria which the Board concludes are not fulfilled in the present case.
The first, second, third and fifth auxiliary requests would then fall with the main request, since the amendments made in them make no material difference for the Board’s analysis:
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the first auxiliary request replaces “environment” with “building structure”, but the term “environment” is already understood, in the context of claim 1 of the main request, as referring to a technical object (see point 14 above);
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the amendments made in the second and fifth auxiliary requests merely concern the simulation steps;
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the third auxiliary request includes an explicit step of displaying the results of the simulation, but the Board is satisfied that claim 1 of the main request already provides information about the simulated movement of pedestrians through a modelled environment (see point 9 above).
In the fourth auxiliary request, claim 1 is directed to a method of designing (a model of) a building structure. The method comprises a step of providing a model, steps of simulating pedestrian movement through the building structure using a computer, and a step of revising the model in dependence upon the movement of the pedestrians. The description of the application makes it clear that the revising step may be performed by a human designer operating a CAD program (see e.g. page 70, lines 7 to 9, of the international publication).
This amendment limits the claimed computer-implemented simulation to its use in a method of design. Since decision T 1227/05 essentially derives the technicality of a computer-implemented simulation from its significance for modern product development processes, this limitation arguably strengthens the appellant’s case. The amendment does not, however, change the Board’s present position that the claimed computer-implemented simulation does not contribute to a technical effect, as a direct link with physical reality is still absent.
At this point, the Board notes that the claimed computer-implemented simulation helps the designer in carrying out design activities in the sense that the simulation allows the designer to verify how the design performs. But it does not causally lead to an improved environment design (or an improved environment when constructed) because any changes made to the design in response to simulation results are still the result of the intellectual activity of the designer (see T 1875/07 of 5 November 2008, discussed in point 45 below, for a similar situation). In the present case, the limitation to a design process therefore appears to make a difference only if it is considered that the (intellectual) activity of designing an environment or building structure qualifies as a technical process.
Third question (reason 28)
The third question to be referred is therefore:
"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?"