On 22 February 2019, a Board of Appeal of the European Patent Office referred a set of questions relating to computer simulations to the Enlarged Board of Appeal (the European patent version of the Supreme Court). This is being considered as pending referral G1/19. This is only the second time that the Enlarged Board of Appeal have considered questions relating to computer-related inventions. If the Enlarged Board of Appeal choose to answer the questions, the result could influence how machine learning and artificial intelligence inventions are examined in Europe.
The full interlocutory decision that led to the referral can be found here: G1/19.
All the People, So Many People
The original case on appeal related to modelling pedestrian crowd movement. Claim 1 of the main request considered a model of a pedestrian that included a “provisional path” and “an inconvenience function”, where movement was analysed around various obstacles. The models could be used to design buildings such as train stations or stadiums.
The Board of Appeal found that claim 1 avoided the exclusions of Articles 52(2) and (3) EPC as it related to a “computer-implemented method”. However, the Board considered that claim 1 was straightforward to implement on a computer “requiring only basic knowledge of data structures and algorithms”. The Board also deemed that the design of the method was not motivated by technical considerations concerning the internal functioning of the computer. The question of inventive step thus revolved around whether claim 1 provided further technical aspects that go beyond the mere functioning of a conventionally programmed computer.
Electrons are People too?
The Appellant argued that the claim provided a further technical effect in the form of “a more accurate simulation of crowd movement”. The Appellant argued that modelling a crowd was no different from modelling a set of electrons. The case on appeal thus considered what form of activities could be seen as a technical task producing a technical effect. The Board was not convinced that numerically calculating the trajectory of an object as determined by the laws of physics was always a technical task; for example, they believed 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.
The problem for the Board of Appeal was that the Appellant cited T 1227/05, which is discussed here. In this case, a numerical simulation of a noise-affected circuit was deemed to provide a technical effect as it related to “an adequately defined class of technical items”. However, the Board agreed that the arguments applied in T 1227/05 could be applied to the modelling of pedestrians, as the laws of physics apply to both people and electrons. The Board appeared minded to go against T 1227/05, on the grounds that the benefits were either in the brains of the engineers using the simulations or were the common benefits of using computers to implement testing methods.
Is Software 2.0 Patentable in Europe?
The Board appreciated that numerical development tools and computer simulations play an important role in the development of new products. Many of the points under discussion could also apply to the much larger field of machine learning, where the lines between measurement and simulation are often blurred. Indeed, the Board note this saying that there may be no ground to distinguish between simulating and using a model to predict the function of a system. The Board believed that a decision on the patentability of simulation methods needs to be made, and guidance on the interpretation of Articles 52(2) and (3) and 56 EPC would be useful.
We have Questions
The Board have thus referred three questions to the Enlarged Board of Appeal:
- 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 referral raises a number of interesting points for computer-related inventions. In the interlocutory decision the Board go back to VICOM (T 208/84) to argue that a direct link with physical reality seems necessary. However, they cited different cases to suggest that it was not clear whether a direct or “real-world” effect needed to be present to provide a technical effect. With simulations there is also a question of whether non-claimed features, such as a future use, could be taken into account when assessing inventive step.
The latter part of the decision provides an overview of a number of Board of Appeal cases in the area of simulation and also touches on the national case law of Germany and the United Kingdom, citing Logikverifikation (published in English in IIC 2002, 231), Halliburton v Smith International  EWHC 1623 (Pat) and Halliburton v Comptroller-General of Patents  EWHC 2508 (Pat).
My Two Cents
The Board of Appeal have done well to summarise the issues in the area of simulation and to highlight where further clarification would be useful. As is often the case, the actual claimed invention appears to be a straw person for consideration of broader policy questions.
The referral is timely. Cases relating to machine learning and “artificial intelligence” are increasing rapidly. Last time the Enlarged Board of Appeal had a chance to clarify the law for computer-implemented inventions, in G3/08, they dodged the bullet, arguing that the referral was inadmissible. The well-formed points by the Board of Appeal, and the general zeitgeist, mean that they may not be able to do this again.