On 15 July 2020, the eagerly awaited referral to Enlarged of Board of Appeal (EBA) regarding computer-implemented inventions was heard at the EPO. Monique Henson takes a look at some of the considerations highlighted in amicus curiae briefs submitted to the EBA.
The referral to the EBA (G1/19 –from T 0489/14) asks whether a simulation can, by itself, provide a technical effect and, if so, what the criteria for determining this are. Perhaps unsurprisingly, the consensus from the briefs seems to be that simulations should not be excluded from patentability per se, as they may be capable of producing a technical effect.
However, several authors take issue with the referral itself, stating that existing case law is sufficient to ensure uniform application of the law, and there is no point of law of fundamental importance raised by the referred questions. For example, the first question in the referral essentially asks whether a computer-implemented simulation can provide a technical effect by itself. In its amicus curiae brief, the IP federation note that it is well established that computer-implemented methods can produce a technical effect beyond their implementation on a computer (e.g. in T 1173/97 IBM), and a computer-implemented simulation is merely an example of a computer-implemented method.
Similarly, several authors submit that the case law relating to computer-implemented methods has been uniform in its application, which means that the first question is inadmissible.
Indeed, a common theme running through the briefs is the question of whether computer-implemented simulations should be treated any differently to any other computer-implemented method, with most authors finding no reason to diverge from the approach for assessing the patentability of computer-implemented inventions established in T 0641/00 (Comvik) and T0258/03 (Hitachi).
In particular, many authors take issue with the suggestion of requiring a "direct link with physical reality", stating that this would contradict existing case law which has established that, for example, the processing of computer-generated images may be technical, even if those images do not represent any real-world object. In addition, there is a concern that this condition may effectively exclude many technologies from patentability, potentially contravening Article 52(1) EPC and the TRIPS agreement, which state that patents shall be granted for inventions in all fields of technology.
Other authors take a different approach and argue for a broader interpretation of a "direct link with physical reality". For example, some argue that a simulation of a technical system necessarily has a link to a physical reality in that a model forming a simulation reflects the laws of nature governing the system that is being simulated. Further, models are often calibrated using values that are derived from real-world measurements, which may imbue technical character even if the measurement steps are not claimed.
Regardless of their preferred solution for the "direct link" issue, the overwhelming consensus in the briefs is that the approach outlined in T 1227/05 (Infineon), which concerned simulations of a noise-affected circuit, should be followed. Watch this space for our follow-up article after the decision has issued.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
