Thursday, March 11, 2021 G 1/19 - Computer-implemented simulation of a technical system or process that is claimed as such

In this case, European patent application relates in particular to the modelling and the simulation of movements of a pedestrian in an environment. The simulation of an individual pedestrian's movement may form part of the simulation of a pedestrian crowd ’s movement in a building. Modelling a building and simulating the movement of a crowd within the building may be useful for verifying whether the design of the building fulfils certain requirements, for example in the case of an evacuation of a stadium or a railway station

In its appeal against the refusal, the appellant argued in particular that the method steps of the claimed invention were technical features or physical parameters. Even if the method steps were considered to be non-technical, they still contributed to the technical character of the invention since they resulted in a technical effect by virtue of their interaction with the computer. Reference was made to T 641/00 (COMVIK, OJ 2003, 352) and to T 1227/05 (OJ 2007, 574), the latter concerning simulations.

In its communication accompanying the summons to oral proceedings, the referring board took the view that the steps forming the claimed method were in themselves non- technical and could contribute to the technical character of the claim only to the extent that their combination interacted with the technical features of the claim to produce a technical effect. Such a technical effect could be present if the design of the simulation steps was motivated by technical considerations of the internal functioning of the computer on which the simulation was implemented, or if the technical effect was part of the overall purpose of the claimed method. The referring board tended to the view that the claimed simulation method did not serve a technical purpose and therefore did not contribute to the technical character of the invention.

By interlocutory decision T 489/14 dated 22 February 2019 (OJ 2019, A86, the "referring decision") Technical Board of Appeal 3.5.07 referred, on the basis of Art.112(1) (a) EPC, the following questions of law to the Enlarged Board  for decision:

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?
2. [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?

After assessing the admissibility of the referred questions, rephrasing of part of the questions, an analysis of the legal framework, the existing case law and the various submissions, The Enlarged Board ruled: 

1. A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation's implementation on a computer.
2. For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
3. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.

Friday, October 26, 2018 T 658/12 - Faulty reasoning does not qualify as insufficient reasoning

In this appeal, the Board agrees with the appellant's argument that the subject-matter of claim 1 involves at least some technical features which are not regarded as notorious knowledge of the skilled person. Apart from business related aspects of order processing the claimed subject-matter also involves aspects concerning authentication and identification of users at different entities of the claimed system. The Board considers the latter to contribute to the technical character of claim 1 so that they cannot be regarded as being part of the non-technical requirement merely to be implemented by the technical skilled person. Further, the examining division interpreted technical features of the claim to be in the administrative, i.e. non-technical domain. The Board in contrast considers those features (related to authentication and identification) to be technical. In the Board's view this was an incorrect application of the COMVIK approach. 
In reason 4.1, the Board indicated that "an insufficiently reasoned decision has to be distinguished from a decision that has faulty or unpersuasive reasoning. The decision under appeal is not based on mere allegations, nor does it lack a clear comprehensive argumentation. The Board agrees with T 690/06 (see reasons, point 13) that notorious prior art, i.e. prior art which cannot reasonably be contested to have been generally known and which is cited without proof, is allowable by the jurisprudence. The COMVIK-approach may have been incorrectly applied, but this is a substantive issue, only involving judgement. Thus, the decision is reasoned in the sense of Rule 111(2) EPC." 
The decision leaves some unsatisfactory feelings... a wrong decision that is -as the Board indicates multiple times- clearly faulty reasoned in several aspects forces the applicant to appeal at the cost of an appeal fee as he would otherwise loose the application, and he will need to pay for the errors made by the first instance division. Some patent attorneys and other stakeholders further expressed their worries that the focus on speed in substantive examination, with only one written round as a main rule, as well as in opposition may lead to more erroneous decisions - which another round of discussion may have prevented. An appeal case like the one below may lead one to consider that also a reimbursement of the appeal fee due to clearly faulty reasoning by the first instance division would be fair, and  not only if there was a substantial procedural violation. 

Keywords:
Remittal - examination of novelty and inventive step (yes - technical features not assessed)
Substantial procedural violation - (no, features incorrectly assessed as non-technical, error of judgement)

Thursday, April 12, 2018 T 2101/12 - Non-technical disclosures are prior art

In the appealed decision, D2 (a US patent application) was cited in a reasoning against novelty. One could therefore be led to believe that this document constitutes at least the most suitable starting point for the assessment of inventive step. The board is however of the opinion that such is not the case (r.6.1). The board also does not consider the document mentioned by the appellant, i.e. D3, or other documents cited in the search report, to be more suitable starting points. Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. In the present case, the board holds that the skilled person starts from this prior art method with zero technical features, the problem which consists in the automation of that method being solved entirely with technical means (r.7.15).
The appellant submitted that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03. The board agrees with the appellant that this opinion is not in line with Catchword 2 of T 172/03 (as also relied upon in the Guidelines for Examination G-VII, 2), unless one interprets the expression "technically relevant" in that Catchword in a trivial manner. The board however considers that the interpretation of Article 54(2) EPC given in T 172/03 is incorrect. 
The applicant also requested to refer to the Enlarged Board: In the assessment of the inventive step of subject matter presenting both technical and non-technical aspects, a problem-solution analysis using a publicly known entirely non-technical practice as "closest prior art", notwithstanding the existence of technical teachings in the same field? The Board did not consider this necessary (r.8)

Wednesday, May 10, 2017 T 1463/11 - Business person versus Skilled person

Is it technical to centralize a function?

The appeal concerns a centralized merchant authentication processing system. The Examining division rejected the application as a "straight-forward implementation of an administrative (outsourced payment) scheme using a notorious distributed information". Initially, also the Board did much like the invention. In the summons, the Board considered the invention to be a "straightforward implementation, on a standard computer network, of non-technical measures (business measures and programming measures)".

Something must have happened after that because the appeal resulted in an order to grant. The reasons provide a detailed discussion of the 'business person' versus the 'skilled person'. 

Tuesday, March 14, 2017 T 0625/11 - How technical is determining a threshold value?

In this appeal from the Examining Division the main question is whether the claimed method of determining a threshold value of an operational parameter of a nuclear reactor, based upon a simulation of the functioning of the reactor, is technical. The Examining Division recognised that the use of a computer made the claimed invention technical in the sense of Art. 52 EPC, but denied inventive step. Discussing the case law, including T 0641/00 (Comvik) and T 1227/05 (Infineon), the Board distinguishes two different approaches. The first approach requires including the functioning of the nuclear reactor to state the technical effect in the claim. The second approach, which is in line with T 1227/05, does not require stating the technical problem in the claim. The Board chooses the second approach and concludes that determining the value of a parameter gives the claim a technical character going beyond the simple interaction between the numerical interaction algorithm and the computer.

Tuesday, September 29, 2015 T 1461/12 - Inventive step for "mixed inventions"

After a refusal of an application for lack of inventive step based on the approach of T 641/00 (COMVIK), the applicant criticized tat approach in appeal. Assessment of claims involving technical as well as non-technical features, inclusion of non-technical aims as constraints to be met in the problem statement, and earlier case law are addressed in detail in the decision.