The Enlarged Board of the European Patent Office recently heard oral arguments concerning patentability of a computer software invention. This rare event was video streamed to over 1600 patent stakeholders.
What was the patent application about?
The patent application in question was about software for simulating movement of pedestrians in a building such as a train station or hospital; an aim being to aid design of the building.
Why was there so much interest?
It is rare for the Enlarged Board to consider questions about patentability of software related inventions and potentially make a change. Any change in patent law in this area has significant commercial implications for those developing and exploiting software products and services. Many parties had filed amicus briefs in advance of the oral proceedings. Depending on how the Enlarged Board answers the questions which have been referred to it there are potential implications for software related patents more generally (even though the referred questions are about simulations). There is also a possibility of an existing case, referred to as T1227/05, becoming law which is no longer followed.
When will the outcome be known?
The Enlarged Board have not said when they will issue their written decision. In similar cases such as case G1/15 there was an oral proceedings on 7 June 2016 and a written decision on 29 November 2016. On that basis we can expect a written decision in the present case, G1/19, around December 2020.
What happened during the oral proceedings?
During the oral proceedings the representative of the patent applicant and the representatives of the President of the EPO made arguments in favour of maintaining the current position. The current position includes established case law which says that software simulations of things like noise in electrical circuits is inherently patentable. The current position includes established case law setting out how to examine inventions which have a mixture of technical features and non-technical features (such as mathematics).
Direct link with physical reality
The referred questions were made by a Board of Appeal and in the referral there are statements about a direct link with physical reality being a requirement for patentability. These statements are possibly one of the reasons for the high level of interest in the present case. At present a requirement for a direct link with physical reality is not made by the EPO in all cases. Introducing such a requirement would be a change that might exclude many software implemented technologies from patent protection.
What is the likely outcome?
The patent applicant and the representatives of the President of the EPO argued in favour of the current position being maintained. On that basis the requirement for a direct link with physical reality will not be made an explicit requirement. During the oral proceedings the Enlarged Board’s view about a direct link with physical reality was unclear. If the current position is maintained then the existing case law about patentability of a simulation of 1/f noise in an electric circuit will remain good law.
There is an option for the Enlarged Board to refuse to answer one or more of the questions which have been referred to it. There is also a possibility that the Enlarged Board will redraft one or more of the referred questions. In order to refuse to answer, or redraft, the Enlarged Board needs to have good reasons such as saying there is no question that needs answering because the current position is already well established and agreed with no conflicts of case law. In my view there is a possibility that part of one of the referred questions will not be answered because the case law about how to examine inventions with a mixture of technical and non-technical features is well established.
What are the referred questions?
The referred questions are set out below for reference. The answers to questions 1, 2b and 3 proposed by the President of the EPO are given in bold.
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? Yes
2a 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? Perhaps this question will not be answered as the COMVIK approach is well established for assessing computer implemented inventions.
2b 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? Yes
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?
No separate answer is needed because of the answers to the earlier questions.