Enlarged Board of Appeal: Mixed inventions with computer

The Enlarged Board of Appeal has ruled on mixed inventions involving a computer program. Once a computer program is running, even merely “potential” technical effects shall always be treated as real technical effects. This is relevant, among other things, for patent protection of an algorithm.

This current decision of the Enlarged Board of Appeal (G 0001/19) shifts important details on the patent protection of inventions involving computer programs. This opens up better patent protection for algorithms and mathematical models.

Facts

European patent application 03793825.5, on which this decision of the Enlarged Board of Appeal is based, concerns a computer-implemented simulation of the movement of a crowd of pedestrians through an environment. The simulation process involved only numerical input and output, without any interaction with physical reality.

Therefore, the Technical Board of Appeal hearing the case ruled that there was a “computer-implemented simulation as such” – and it is not patentable.

The applicant appealed against this decision – fortunately, one might say, because the Technical Board of Appeal thus presented fundamental questions on the patentability of computer-implemented simulations to the Enlarged Board of Appeal.

The question referred:

“In assessing inventive step, can computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect that goes beyond implementing the simulation on a computer, if the computer-implemented simulation is claimed as such?” – was an essential question referred.

Ruling on mixed inventions involving a computer program

The Enlarged Board of Appeal answered this in detail for mixed inventions, but most importantly it made fundamental findings for computer-implemented simulations that made one sit up and take notice:

For assessing whether a simulation contributes to the technical character of the claimed invention, it is not decisive whether a technical or a non-technical system or process is simulated, the Enlarged Board of Appeal decided.

And once a computer program is running, even merely “potential” technical effects should always be treated as genuine technical effects.

Mixed inventions with computer program

In principle, computer-implemented inventions are patentable – but programs for computers, source code or an algorithm as such are not. This is based on Article 52 in the European Patent Convention (EPC), according to which abstract and intellectual inventions cannot be patented because they lack the indispensable technical character.

This is more complicated when a computer-implemented invention consists of a mixture of technical features (e.g., a computer or a cell phone) and non-technical features (e.g., a computer program). Such inventions are called mixed inventions, and indeed such mixed inventions are the rule among computer-implemented inventions.

Legally, the rules for mixed inventions are also set out in Article 52(2) EPC. This article contains a list of non-patentable subject matter (because they are non-technical), but it does not claim to be exhaustive or conclusive. Among other things, “programs for data processing” are mentioned in this list as non-patentable. However, this exclusion from patentability is limited to “the subject matter or activity as such” (Article 52(3) EPC).

In practice, this is usually solved by limiting the claimed subject-matter to a scope for which a technical effect can be recognized.

Mixed inventions with computer programs and inventive step

Whether a mixed invention is based on an inventive step is always assessed by the European Patent Office according to the COMVIK approach (T 641/00, OJ EPO 2003, 352). This requires that only claim features contributing to the technical character of the invention are taken into account for the assessment of inventive step. Nevertheless, according to the COMVIK approach, non-technical features may also contribute to the technical character of an invention as a whole.

Simulation: not decisive that technical system is simulated

For the assessment of whether a simulation contributes to the technical character of the claimed invention, it is not decisive whether a technical or a non-technical system or process is simulated, the Enlarged Board of Appeal decided and explained in more detail.

Input and output, however, are always data “as such” if only the data processing within the computer is considered. But, in most cases, however, data processing is connected to the external world, the Enlarged Board of Appeal postulated. And any technical effect that goes beyond the normal electrical interactions within the computer on which the simulation is implemented (i.e., any “further technical effect”) can be considered inventive step.

Moreover, a direct relation to physical reality is not required in every case, the Enlarged Board of Appeal specified. In particular, technical effects may also occur within the computer-implemented process, such as specific adaptations of a computer or data transmission.

Relevance of algorithm in simulations

The Enlarged Board of Appeal also explicitly commented on the issue of algorithms in simulations. Previously, it was held that an algorithm contributes to the technical character of a computer-based method only if it provides a “technical purpose” (according to T 1358/09 and T 1784/06). The Enlarged Board of Appeal further stated that.

Once identified as contributing to the technical character of a simulation, algorithms, such as models and equations, may be relevant in the final step of evaluation under Art. 56 EPC, the Enlarged Board of Appeal ruled know. After all, a bad algorithm could lead to a simulation that does not solve the problem relevant to the problem-solving approach, according to the Board.

The decision – a reorganization of law?

It is true that simulations have very often been considered patentable in the past.

Nevertheless, the present decision of the Enlarged Board of Appeal shifts important details concerning the patent protection of inventions involving computer programs. The EPO’s decision practice has so far distinguished between the effect of a running computer and the technical effect produced by the running of the computer (see: decision T 1173).

The present decision of the Enlarged Board of Appeal reverses this. Once a computer program is running, even “potential” technical effects can always be treated as genuine technical effects for the purposes of analysis under the COMVIK approach. Ultimately, this also opens up better patent protection for algorithms and mathematical models.