A piece of patent history has been made concerning patentability of computer software inventions

In March 2021 the Enlarged Board of Appeal of the European Patent Office answered questions concerning patentability of computer software simulations in case G1/19. A Technical Board of Appeal has now applied the answers to the particular patent application and found nothing allowable. Useful guidance about how to protect simulation technologies was given.

On 26th November 2021 the patent applicant presented oral arguments to the Technical Board of Appeal. The procedure was open to the public as observers. The applicant had submitted several sets of patent claims (referred to as auxiliary requests) to be considered in numerical order. There were 11 requests in total.

What were the answers the Enlarged Board gave?

Generally speaking the answers were that computer simulation technology is patent eligible in cases where there is a technical contribution over the whole claim scope which is new and inventive. The Technical Board of Appeal therefore had to consider whether the auxiliary requests gave a technical contribution over the whole claim scope.

What was the patent application about?

The patent application in question was about software for simulating movement of pedestrians in a building such as a train station or hospital; an aim being to aid design of the building.

What were the auxiliary requests?

Requests 1 to 6 were not considered by the Technical Board of Appeal in the hearing as the applicant did not raise any new arguments in relation to them.

The applicant filed Auxiliary Requests 7-11 in response to remarks made in G1/19. The Auxiliary Requests included amendments which were designed to address specific points made in G1/19, namely whether real world measurements being used as inputs into a computer simulation and whether outputs which took place in the real world from a computer simulation constituted technical effects. The point in question was included in paragraph 85 of G1/19:

85. “Technical input may consist of a measurement; technical output may exist as a control signal used for controlling a machine. Both technical input and technical output are typically achieved through direct links with physical reality. (…) technical effects can occur within the computer-implemented process and at the input and output of this process.”

Auxiliary Requests 7, 8 and 9 – Technical Inputs

Auxiliary requests 7 to 9 added details about measurements input to the simulation.

The amendments made in Auxiliary Request 7 (AR7) included features describing the use of a “profile” in the simulation wherein said profile is based on “a set of measured attributes”.

Auxiliary Request 8 (AR8) added further detail about said “profile”.

Auxiliary Request 9 (AR9) described “generating timers associated with the pedestrian established experimentally from measurements”. From a high level, the amendments describe the use of measurement made in the real-world and using said measurement as an input to a computer implemented process.

The applicant made the point that the claims in AR7 and AR8 could be considered to be solving the technical problem of how to provide a more accurate simulation for crowd movements in a building structure in the real world.

The Auxiliary Requests were directed at the remarks made by the Enlarged Board in paragraph 85, as discussed previously, and paragraph 99 of G1/19 which concerned the technical character of technical inputs and measurements in computer implemented processes:

99. “It is generally acknowledged that measurements have technical character since they are based on an interaction with physical reality at the outset of the measurement method. Measurements are often carried out using indirect measurements, for example, the measurement of a specific physical entity at a specific location by means of measurements of another physical entity and/or measurements at another location. Even though such indirect measurements may involve significant computing efforts, they are still related to physical reality and thus of a technical nature, regardless of what use is made of the results.”

To support their arguments, the applicant referred to decision T1892/17. The relevant application (EP2695270) was originally granted and then revoked by the opposition decision before being maintained as granted after appeal in August of this year. In short, the application related to a method that measures the consumption of electric power by individual consumers, wherein said measurements are used to determine time curves for characterising energy consumption for individual customers. The time curves are then factored into the process of apportioning electric power to individual customers. In T1892/17 the Board remarked in section 2.1.4:

“The board recognises that method steps (…) relating to determining characteristic time curves, making a prognosis for a future time period, making a plan for apportioning of electric power based on the characteristic time curves and adapting it to the prognosis, when considered in isolation, only involve data processing and simulation aspects. However it is a general principle that the question whether a feature contributes to the technical character of the claimed subject-matter is to be assessed in view of the whole scope of the claim.”

The applicant attempted to draw parallels between the outcome of T1892/17 to argue for the technicality of AR7 and AR8 in that they both input real world measurements into a computer simulation to provide a technical effect.

The Board first questioned whether the “building structure” in the claims is part of the real world or if it is just a model. The applicant responded that it is a building that is simulated as if it was in the real world. The Board also asked whether the measurement took place in the steps of the claim, to which the applicant responded that the measurements would have been made previously and there is no basis in the application for measurements being made as part of the steps of the claim.

The Board then made the point that the claims of T1892/17 included the measurements being made as part of the claimed method. The Board also remarked that although a measurement linked the claimed invention to the real world, the purpose of the measurements used in AR7 and AR8 is still only to improve the simulation and therefore does not provide a technical effect. This was in contrast to the application in decision T1892/17 which has a more substantial real-world link as highlighted in the Board’s remarks in section 2.1.4 of T1892/17:

“The claimed invention does not refer to a simulation as such. The data processing or simulation is rather defined in claim 1 as being based on (real) measurements of consumed electric power in a technical system, resulting in a plan and a prognosis, which does not produce a purely virtual effect. Rather, the plan made on the basis of the characteristic time curves and thus, on the basis of the measured consumed electric power, is in fact defined in claim 1 as being used for a (real) apportionment of the electric power according to this plan”

The applicant then referred to decision T0438/14 (EP1678485) that concerned an invention which simulated condensation conditions using images from an IR-camera as measurements of temperature variation over a surface and therefore determined the risk of condensation on the surface. T0438/14 is considered a positive example of where the COMVIK approach has led to an application being allowed as even though some of the distinguishing features of the claim are non-technical when taken alone, they make a technical contribution in the context of the whole invention. The applicant argued the claims in AR7-AR9 should be regarded in the same light as in T0438/14. However, the Board noted that the IR-camera referred to in T0438/14 is a real object and is therefore directly linked to the real-world and is thus considered technical. Whereas the simulated buildings in AR7-AR9 do not exist in the real world.

The Board indicated that they should answer the question: are real-world measurements that are input into a simulation only used for improving the simulation, and if so, can that be regarded as a technical effect?

In addition, the question arose regarding how the broad the definition of a “measurement” should be. The applicant remarked that it would be useful if such a definition of “measurement” were commented on in the decision. Should the term include measurements stored in textbooks/databases, measurements calculated within a computer from real-world measurements and/or measurements taken during the steps taken by the invention?

Outcome – AR7-AR9

The Board rejected AR7-AR9 as they did not have an inventive step. Based on comments made during discussions, it appears the main stumbling block was that although the real world “measurements” made to provide “profiles” to be used in the claims could be considered technical, the purpose of using such inputs was still for the purpose of improving the simulation. A point made in T1892/17, section 2.1.4. is particularly relevant in this scenario: “(…) it is a general principle that the question whether a feature contributes to the technical character of the claimed subject-matter is to be assessed in view of the whole scope of the claim.” It is not enough to just link the claims to an aspect of the real world through the use of a real-world measurement as an input if the claim as a whole is still directed to improving the simulation.

Auxiliary Requests 10 and 11 – Technical Outputs

Auxiliary request 10 (AR10) was directed to “controlling movement of an entity through an environment”, said entity being described in one clause as an “autonomous entity”. Auxiliary request 11 (AR11) narrowed the scope from AR10 as instead of an “entity” claims described “a robot”. AR10 and AR11 were both directed towards remarks concerning technical outputs made in paragraph 85 in G1/19.

Outcome – AR10-AR11

Unfortunately, a discussion concerning the technicality of AR10 and AR11 could not take place as they were deemed inadmissible by the Board. The Board noted that although these claims had basis in the application as filed, the claims had been deleted during prosecution. They considered that these auxiliary requests were like being confronted with a fresh case.

Summary and Final Remarks

Although the appeal was dismissed by the Board, there is still plenty of useful information for applicants regarding patent protection of computer simulations to be gathered from the proceedings. Firstly, a comparison of the facts in this case with T1892/17 and T0438/14 provides clarity over how real world measurements can be used to give technical character to an invention involving a computer implemented process. A key difference was that AR7-AR9 were fundamentally directed towards improving the simulation itself rather than improving real things such as how power is distributed (see T1892/17) or to improve the monitoring of condensation risk using infra red cameras to sense temperature variation (see T0438/14).

It is unfortunate there were not any substantial discussions regarding the technicality of the outputs included into AR10 and AR11, as including features which described directly controlling or influencing real world entities could be deemed to have a far better chance of being considered technical over the whole claim scope compared to the use of inputs in AR7-AR9. A divisional application has been filed but we will need to wait until it is published to see if it corresponds to AR10 and AR11.

Importantly, applicants are encouraged to take into account the COMVIK approach as closely as possible when drafting applications involving computer implemented processes.

At the end of the proceedings, it was noted by the attorney that the application in question was drafted before the COMVIK decision and as such was not drafted with the three hurdle approach in mind. This is in contrast to other applications referred to during proceedings (T1892/17 and T0438/14) which were successful, that may have been drafted with the COMVIK approach in mind.

The decision marked another important chapter in a case that has been alive for over 19 years. A (very relieved looking) attorney was thanked by the Board for promoting healthy discussions about the patentability of simulation related inventions and for making a valuable contribution to the case law.