Real-world rules apply to patenting computer simulations

About the authors

Tom Gregory is a trainee patent attorney at Appleyard Lees IP LLP. Tom’s work is primarily focused on the mechanics and electronics sectors. He also has valuable experience in computer-implemented inventions and software. Tom’s recent work has been for clients in the aerospace and electronic consumer goods industries, and for university research departments across various fields of innovation.

Parminder Lally is a senior associate specialising in drafting and prosecuting patent applications for computer-implemented inventions. She has built a substantial reputation working with high-growth start-ups, spin-outs and SMEs in Cambridge, and has in-house experience.

Key Takeaways

It is possible to patent computer-implemented inventions at the European Patent Office (EPO). 

In particular, it is possible to patent computer-implemented inventions (CIIs) which function in the real-world.  For example, a computer program that is used to compress video operates on real-world video input and produces compressed video as a real-world output.  Similarly, artificial intelligence models to perform speech or image analysis operate on real-world data and produce a real-world output.  The question that has recently been asked of the EPO is whether computer-implemented simulations that model the real-world but do not interact with any real-world data or physical systems are patentable. 

The answer provided by the Enlarged Board of Appeal (EBA) of the EPO in their decision G 1/19, is that computer-implemented simulation methods are to be assessed in an identical manner to any other form of computer-implemented invention.

Computer simulations are used to model real-world systems, so that the behaviour or outcome of the real-world system can be safely tested before being unleashed into the public.  Computer simulations and artificial intelligence models are now commonly used to understand smart cities and telecoms infrastructure upgrades, to identify new drugs, to design and test mechanical structures, and test autonomous vehicle response to hazards.  Thus, the EBA’s decision is good news for innovators who are generating computer simulation and AI-based inventions. 

For anyone interested in finding out more about the decision, our summary of the 66-page long decision is provided below.  If you would like to know what implications this has for anyone drafting and prosecuting patent applications for computer-implemented inventions, scroll down to the final section of this article.

Summary of G1/19

Background

The decision concerns European patent application 03793825.5. The invention relates to the modelling and simulation of movements of a pedestrian, and a crowd, in an environment such as a building. In this way, the safety of the building design can be verified.

The background to the decision and details of the oral proceedings held at the EPO are discussed in detail in our earlier article from July 2020.  The original referral to the EBA is discussed in our article from March 2019.

The referred questions

The following questions were referred 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?

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?

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?

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?

The EBA considered Question 2A to be vague, and that an answer to Question 2A would not assist the referring board in their decision. Question 2A was therefore deemed not to be admissible, following which Question 2B was reformulated as:

2B. For the assessment of whether a computer-implemented simulation claimed as such solves a technical problem, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

Decision of the EBA

Question 1

Answer: Yes

The main theme of the decision is that patentability of computer-implemented simulations is to be assessed in an identical manner to any other form of CII. The assessment is made following the long-established COMVIK approach. So, simulations may be protected by a European patent if the simulation involves an inventive step over the prior art, considering only the features which contribute to the technical character of the invention. Features making no contribution to technical character cannot support the presence of inventive step.

The decision makes clear that no group of CII can be a priori excluded from patent protection. That is, a claim to a computer-implemented simulation as such is not a barrier to patentability. Like any other computer-implemented method, a simulation without an output having a direct link with physical reality may still solve a technical problem

Question 2B

Answer: No

Following the COMVIK approach, simulation of a non-technical system or process may contribute to the technical character of an invention. On the other hand, it may be that the simulation of a technical system or process does not contribute to technical character.

A simulation is necessarily based on the principles underlying the simulated system or process. Even if these principles are technical in nature, it does not follow that the simulation itself has technical character.

If it was a sufficient condition that the simulation is based on technical principles underlying the simulated system or process, then computer-implemented simulations would hold a privileged position within the wider group of CIIs without there being any legal basis for such privilege.

The EBA held that the answer to Question 2B was “no”, which means that for numerical simulations too it must be examined on a case-by-case basis whether the standard “technicality” criteria for CIIs are met.

Question 3

Answer: The answers to 1 and 2B are no different if the computer-implemented simulation is claimed as part of a design process.

Finally, following the COMVIK approach and depending on technical context, features relating to the design may or may not contribute to the technical character of a claimed invention. In short, a simulation claimed as part of a design process is not to be treated any differently to any other CII.

Impact of the Decision and Implications for Patent Practitioners and IP Managers

To date, there have not been many EPO decisions on computer simulation methods that do not interact with external, real-world systems or processes.  This may be because patent applicants (and their patent attorneys) have tried to avoid ‘testing the water’ and have instead grounded any simulation methods in physical reality.  For instance, claims for computer simulation methods may have been drafted with a step that used the output of the simulation to control a real-world machine.  Therefore, although G1/19 has not changed how the patentability of simulation methods is to be assessed, it is useful because it clarifies that the same rules apply to simulation methods that are entirely virtual as to those which are tied to real hardware or real processes.

G1/19 makes clear that no direct link with (external) physical reality is required in claiming a computer-implemented simulation. Thus, simulations which are entirely virtual may be patented.  Furthermore, computer-implemented simulations do not need to correspond to real systems. The decision states that such simulations are significant because they allow investigation of a system without needing to first build the system.

It is necessary to think about the technical effect of the computer simulation or computer-implemented invention, and to ensure a patent application explains the technical effect clearly.  In particular it is helpful to explain within the patent application which features of the process performed by the computer lead to the technical effect.

A model is usually mathematical in nature, but mathematical methods are not considered technical.  Simply saying that a mathematical model is implemented on a standard or generic computer is not enough to provide a technical effect.  However, mathematical models and algorithms may contribute to the technical character of a computer-implemented method if they serve a technical purpose.  For example, using mathematical models to perform image classification and identify humans in a digital image, or to remove noise from audio signals, is considered to be technical.  Therefore, again, it is helpful to explain in a patent application how the mathematics contributes to the technical effect of the invention.

In claiming a computer-implemented simulation, the underlying model will be important to consider in its contribution to technicality of the invention. In particular, the boundaries of the model may contribute to the technical character if, for example, they form the basis for a further technical use of the outcomes of the simulation (e.g. a use having an impact on physical reality). As an example, where a simulation involves training of autonomous vehicles, and the simulation is used to adjust braking profiles of the production vehicle, then the boundaries of the model (e.g. maximum braking force; coefficient of friction of rubber on tarmac, etc.) form the basis of a further technical use, and will therefore contribute to the technical character of the invention.

Similarly, the technical effect need not be an external technical effect. A mathematical model which is adapted to the computer on which it is implemented may have a technical effect.  For instance, if the mathematical model optimises the use of the hardware resources of the computer (battery, power, memory, etc.) then there may be a technical effect. 

The decision is good news for anyone innovating in the fields of digital twin models, autonomous vehicle training, drug discovery, and computer game design, to name but a few.  Patents may be granted by the EPO for computer-implemented inventions in these fields without requiring a direct link with physical reality, and as long as you can demonstrate the invention has a technical effect.

If you are preparing patent applications for your clients that may eventually be filed in Europe, we would be happy to review the application to ensure it is framed with the EPO’s approach to computer-implemented inventions in mind.  Similarly, if you are deciding whether to patent a computer simulation method you have invented, we would be happy to review your invention and help identify the technical problem that the invention aims to solve, and the technical and non-technical features which provide the solution to the problem.

If your business depends on computer-implemented inventions, we can secure the intellectual property (IP) protection you need, so you can maintain your exclusivity. In addition, we can define a clear path for you through the IP surrounding your technology, so you can continue and grow your business.

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