Methods for performing mental acts and computer programs are not considered inventions under the European Patent Convention (EPC) and are excluded from patentability. For different types of computer implemented inventions (CII) to be considered patentable, the subject matter of the claims must cause ‘a further technical effect’ when the invention is run on a computer; the further technical effect going beyond the ‘normal’ physical interactions between a program (software) and the computer (hardware) on which it is run. One example of this is the encryption of electronic communications.
In such instances, an invention is no longer taken to be necessarily excluded and the questions of novelty and inventive step become relevant. The assessment of patentability for CII hence involves the separation of technical and non-technical features of a claim, often a difficult task, such that the technical features may be assessed with respect to novelty and inventive step.
Recently, the Technical Board of Appeal (TBA) of the European Patent Office (EPO) gave a decision in respect of an appeal (T 0489/14) against the refusal of an application (EP 03793825.5) on the grounds of lack of inventive step. The application describes a mathematical model of individual pedestrians and an algorithm for simulating their movement through an environment. The simulations are intended to in aid the design/planning of busy environments and be applied to designing venues, troubleshooting flow problems, operational management, setting and implementing safety standards and quality control.
The application claimed a method which specified a number of computer implemented steps to perform the simulation, however it was held that the simulation model was non-technical and the only technical feature of the claim was found to be its implementation on a computer. It was noted that 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, and that no such link was present in the method as claimed, since it appeared 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’. Therefore, the method was found to lack inventive step over a known general-purpose computer.
Following consideration of some previous related decisions, the TBA acknowledged potential conflict between certain decisions (T 1227/05 and T 453/01), and also appreciated that relevant questions may not be directly and unambiguously answered only by reference to the EPC.
It was also pointed out that industrial simulation methods are becoming more and more crucial to technological progress, and that patent protection is appropriate for these types of numerical development tools designed for a technical purpose. Consequently, the TBA considered that a more fundamental decision as to the patentability of simulation methods should be made, and accordingly opted to refer the following questions to the Enlarged Board of Appeal (EBA) for consideration:
- 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?
- 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?
- 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?
The answers to these questions will be important, not just for the application in question in T0489/14 but for a potentially very large number of cases involving computer implemented simulations now and in the future. The EBA decision will hopefully help to determine what types of computer implemented steps may constitute a technical effect in the realm of computer implemented simulations.