Enlarged Board of Appeal referral on computer simulations
The Examining Division refused the application on the basis of lacking inventive step. A European patent application was pursued with claims directed to a computer-implemented simulation of movement of an autonomous entity through an environment (more specifically the movement of pedestrians through a building). The technical problem was formulated as designing of a building structure. The Examining Division had refused the application considering that the simulation model was non-technical and its implementation on a computer was obvious. The Examining Division had rejected arguments that the simulation was essential to the design process.
On appeal before the Technical Board of Appeal (TBA), the (Applicant) Appellant argued that the method steps were technical features as they related to physical parameters which could be expressed as physical quantities as well as arguing the that they contributed to the technical character by virtue of interaction with the computer. The Appellant further argued that the TBA should follow the jurisprudence laid down in T1227/05 which granted claims relating to a simulation method for designing noise-affected circuits.
The TBA reasoned that the method steps could be carried out exclusively mentally and so the claims related to a mental act regardless of whether the steps include technical considerations. In their opinion, the claim also lacked a direct link with physical reality as the building being designed may never actually exist.
However, the TBA acknowledged that T1227/05 supported the Appellant’s position, but was not convinced that the reasoning displayed in that decision was correct. First, they thought that a cognitive process of verifying a design appeared to be fundamentally non-technical. Secondly, they suspected that any algorithmically implemented procedure can be carried out faster on a computer than mentally but the implementation of a non-technical method on a computer does not provide a technical contribution over its computer implementation.
In order to provide legal certainty in relation to patentability of simulation and other such tools, the TBA decided to submit the following three questions to the Enlarged Board of Appeal:
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?