G 1/19 Explained

G 1/19
Enlarged Board of Appeal of the European Patent Office
Decision issued on 10 March 2021
Board composition
Chairman: Carl Josefsson Members: Fritz Blumer, Gunnar Eliasson, Adem Aslan, Ingo Beckedorf, Tamás Bokor, Andrea Ritzka
Headwords
Pedestrian simulation

G 1/19 is a decision issued by the Enlarged Board of Appeal of the European Patent Office (EPO) on 10 March 2021, which deals with the patentability of computer-implemented simulations.^{[1] [2]}

Background

The case, triggered by decision T 489/14 issued on 22 February 2019 by Board of Appeal 3.5.07, deals with a European patent application relating to "a computer-implemented method, computer program and apparatus for simulating the movement of a pedestrian crowd through an environment".^{[3] [4]} "The main purpose of the simulation is its use in a process for designing a venue such as a railway station or a stadium".^{[5] [4]} While Board 3.5.07 acknowledged the analogy with case T 1227/05 (Circuit simulation I/Infineon Technologies)^[6] (in which the specific mathematical steps involved in a computer-implemented simulation of an electrical circuit subject to noise were found to contribute to the technical character of the invention),^[7] which supported the applicant's case,^[8] the Board did not agree with the conclusion reached by the deciding Board in T 1227/05.^[4] Eventually, considering this to be a question of fundamental importance, Board 3.5.07 decided to refer three questions to the Enlarged Board of Appeal.

The questions

The three questions referred to the Enlarged Board of Appeal are:

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. 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?
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?"

Amicus curiae and oral proceedings

Oral proceedings took place before the Enlarged Board of Appeal on July 15, 2020.^[9] The oral proceedings were live streamed over the internet.^[9] Additionally, third parties were given the opportunity to file written statements after the initial referral to the Enlarged Board of Appeal, to be considered as part of these oral proceedings, resulting in the filing of 23 amicus curiae briefs.^[10]

Decision

The Enlarged Board of Appeal held "that existing case law regarding computer-implemented inventions also applies to computer-implemented simulations", and it retained "its established approach in assessing inventive step, known as the COMVIK approach".^[2]

See also

• G 3/08, referral relating to the patentability of programs for computers (referral held to be inadmissible for lack of divergent case law)

Further reading

• Moufang . Rainer . Zur Patentierung von Entwurfs- und Simulationsverfahren in der EPA-Rechtsprechung . On the Patenting of Design and Simulation Procedures in EPO Jurisprudence . GRUR Int . 2018 . 12 . 1146-1151 . German.
• Web site: Teschemacher . Rudolf . EPO – Enlarged Board of Appeal asked to decide on the patentability of computer-implemented simulation programs . EPLAW Patent Blog . EPLAW - European Patent Lawyers Association . March 6, 2019. March 25, 2019.

"Establishing technical character - direct link to physical reality"

"Establishing technical character - potential technical effect"

"Establishing technical character - virtual or "calculated" technical effect"

"Establishing technical character - tangible technical effect"

"Establishing technical character - computer-implemented simulation methods"

"Inventive step - problem and solution approach"

"Inventive step - technical problem - determination of the objective technical problem in general"

"Inventive step - technical problem - formulation of the objective technical problem"

"Inventive step - assessment of features relating to mathematical algorithms - simulations"

"The Vienna Convention on the law of treaties - application of the rules of interpretation"

"Impact of national decisions on the case law of the boards of appeal - national decisions: no binding effect on the boards of appeal"

"Referral by a board of appeal - point of law of fundamental importance"

External links

• Decision G 1/19 of the Enlarged Board of Appeal of 10 March 2021
• Decision T 489/14 (Pedestrian simulation/CONNOR) of 22 February 2019 (referring decision)

Notes and References

1. Web site: Referrals pending before the Enlarged Board of Appeal . epo.org . European Patent Office . 30 March 2019.
2. Web site: Sandys . Amy . Enlarged Board of Appeal releases G 1/19 decision on patenting computer simulations . JUVE Patent . Juve Patent . 12 March 2021 . 11 March 2021.
3. https://www.epo.org/law-practice/case-law-appeals/recent/t140489ex1.html Decision T 489/14 (Pedestrian simulation/CONNOR) of 22.2.2019
4. Web site: Computer implemented simulations referred to the Enlarged Board of Appeal . King . Scott . Hoyles . Matthew . February 28, 2019 . Kluwer Patent Blog . Kluwer Law International . March 25, 2019.
5. T 489/14, Reasons 2, third paragraph.
6. T 489/14, Reasons 14, first paragraph.
7. https://www.epo.org/law-practice/case-law-appeals/recent/t051227ep1.html Decision T 1227/05 (Circuit simulation I/Infineon Technologies) of 13.12.2006
8. T 489/14, Reasons 15, first paragraph.
9. Web site: Oral proceedings in case G 1/19 before the Enlarged Board of Appeal . epo.org . Boards of Appeal of the European Patent Office . 4 July 2020 . Haar . 1 July 2020.
10. Web site: G1/19: amicus curiae briefs . epo.org . Boards of Appeal of the European Patent Office . 16 July 2020 . Haar . 15 July 2020 . 21 October 2020 . https://web.archive.org/web/20201021100536/https://www.epo.org/law-practice/case-law-appeals/eba/pending/g1-19.html . dead .