G1/19: an update after the oral proceedings

This is only the second time that the EPO’s highest court has considered questions regarding patentability of computer-implemented inventions. The hearing itself, however, was also notable since it is the first time that oral proceedings before the Enlarged Board have been live-streamed to the public, allowing access to a far wider audience. 1600 people subscribed to watch the live feed.

G1/19 is important because it deals with a fundamental question: to what extent are computer-implemented simulations patentable? It affects whether the tools used in designing everything from bikes to airplanes and from computer chips to the Internet are patentable. In addition, because of the fundamental nature of the issues that it raises, G1/19 also has the potential to have an impact on EPO practice not only in simulations, but also in other significant areas such as AI and machine learning.

In G1/19, the Technical Board of Appeal in T 489/17 questioned the approach taken set out in T 1227/05 (INFINEON/Circuit Simulation) when assessing patentability of computer-implemented simulations and so referred three questions to the Enlarged Board, namely:

• 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?

Before the hearing, numerous amicus curiae briefs were filed by stakeholders including the EPO President. Contrary to the referring Board’s view, the majority of the stakeholders thought the first two questions should be answered, “yes”.

At the hearing, the appellant – represented by Venner Shipley’s Pawel Piotrowicz – and the EPO President – represented by Ms Heli Pihlajamaa, Ms Doris Thums and Mr Miguel Domingo Vecchioni – presented arguments in response to questions raised by Rapporteurs Blumer and Eliasson on behalf of the Enlarged Board. These covered a range of issues, such whether the well-established COMVIK approach to assessing computer-implemented inventions was suitable for the examination of computer-implemented simulations, to what extent could “virtual” technical effects be treated in the same way as “real” technical effects, and whether it matters whether the simulated system or process is based in part or entirely on human behaviour or on natural phenomena.

The proceedings initially focused on admissibility. The Chairman of the Enlarged Board, Carl Josefesson, gave a preliminary opinion that the questions were admissible in part. The Enlarged Board were of the opinion that the questions were admissible except for the first part of the second question, i.e., regarding the criteria.

The Chairman also expressed the preliminary opinion that the answers to the first question and the second part of the second question should be “yes” and “no”, respectively. The Enlarged Board did not give away too much more than this and so it is unclear how they will decide, and a range of possible outcomes (including the possibility of re-wording the questions) is possible. For example it is possible that the preliminary opinion – which was formed before submissions were made at oral proceedings – could change in response to those submissions. On the other hand, should the Enlarged Board confirm its preliminary answers to the first and second questions, it would mean that simulation methods are patentable in some cases, but that current EPO practice and guidelines for examination need to change. Exactly what that change would look like depends very much on the detail of the Enlarged Board’s findings.

A decision is expected later in the year.

For more updates on the G1/19 case, click here.