More detail has become available about how to assess patentability of computer software simulations in Europe

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 applied the answers to the particular European patent application 03793825.5 and found nothing allowable. On 26th November 2021 the patent applicant presented oral arguments to the Technical Board of Appeal. Our previous article reported on the oral proceeding:

https://www.cms-lawnow.com/ealerts/2021/12/a-piece-of-patent-history-has-been-made-concerning-patentability-of-computer-software-inventions

The reasoned decision of the Technical Board of Appeal was published in writing All documents - European Patent Register (epo.org) on the 8th April 2022 and we provide a summary here.

Background

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. 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.

Main Request and Auxiliary Requests 1-6

The board applied decision G1/19 to the main request and fourth auxiliary request in particular to assess simulation methods and design methods of the invention.

Assessing simulation method – identify technical effect

The main request of this application was directed to a computer-implemented method of modelling pedestrian crowd movement in an environment. The Technical Board of Appeal noted that the Enlarged Board set out three categories of technical effect: direct technical effects, potential technical effects and virtual technical effects; any of which are potentially patent eligible. The Technical Board of Appeal went on to examine whether the main request fell into the potential technical effect category.

The Technical Board of Appeal considered whether the simulation of data about the movement of simulated pedestrians through a modelling environment qualifies as a potential technical effect. The Technical Board of Appeal stated that if claimed data or data resulting from a claimed process was specifically adapted for the purpose of controlling a technical device, the technical effect that would result from this intended use of the data could be considered to be “implied” by the claim and therefore used for assessing inventive step. In this case, because the provision of information about the movement of simulated pedestrians through a modelled environment could have other relevant uses, such as for use in computer games or in presentation to a human for obtaining knowledge about the modelled environment, the board found that the technical effect was not achieved over substantially the whole scope of the claimed invention. Therefore, claim 1 of the main request was considered to lack inventive step. This reasoning from the board also was applied to claim 1 of the first, second, third and fifth auxiliary requests.

There is no explicit reasoning given by the Technical Board of Appeal as to why the main request did not have a direct technical effect. However, this seems uncontroversial since in the main request there is no output step using the simulation results to control something in the real world.

Regarding virtual technical effect, the Technical Board of Appeal notes these are a category which is potentially patent eligible. The Technical Board of Appeal goes on to say that “merely providing calculated data which corresponds closely to technical effects of physical entities is not a technical effect relevant for the assessment of inventive step”. One interpretation of that statement is that the Technical Board of Appeal decided the main request is in the virtual technical effect category. Because there was no technical implementation (where the simulation was adapted to particular hardware or network) the main request in the virtual technical effect category failed.

A key learning point regarding the main request is to think carefully at the time of drafting about how to limit the claim scope so it excludes any non-technical uses of the simulation such as, in the present case, for computer games. Note that using a simulation to enable a human to obtain knowledge about the simulated environment was not considered a technical purpose.

Assessing design method – apply the same rule as when assessing simulation methods

In the fourth auxiliary request the simulation method was further defined to be displayed to the user and for the purpose of designing building structures. The claim included a step of revising a designed model in dependence upon the simulated movement of pedestrians through the modelled building structure. The description of the application described that the revising step may be performed by a human designer operating a CAD program.

In light of G1/19, the Technical Board of Appeal examined whether there was a potential technical effect. This was not the case over the whole claim scope because the model could be used “for a variety of non-technical purposes, for example, in a video game, and therefore has no “implied technical use”.”

In the light of G1/19 the Technical Board of Appeal also examined whether there was a technical implementation. The board decided that the added revising step may be carried out by a human, therefore an inventive step in the subject-matter of claim 1 still cannot reside in the implementation of the method on a computer.

Also, the simulation did not influence the designed model in any technical manner. Therefore claim 1 of fourth auxiliary request was considered to lack inventive step. Claim 1 of sixth auxiliary request which leaves the design model entirely up to the human designer also for the same reasoning was considered to lack inventive step.

A key learning point regarding the fourth and 6th auxiliary requests is to think carefully at the time of drafting about what scope to include. If the design process is fully automated in some cases and manual in others, then consider omitting the manual embodiments. This will enable the claim to be examined for possible technical implementation inventions which are patent eligible (where the algorithm is adapted to the computer hardware or network).

Try to add claim features about how the simulation influences the design in a technical manner and try to ensure the claim is technical over the whole scope.

7th, 8th and 9th Auxiliary Requests – Technical Inputs?

The seventh auxiliary request added the feature that providing a profile for a pedestrian comprises “basing said profile on a set of measured attributes” to the first auxiliary request. The eighth auxiliary request also included a feature relating to the measured inputs, but with more detail relating to how the attributes are calculated. The ninth auxiliary request added a feature to the first auxiliary request relating to the use of timers associated with waiting times, however this request was not admitted into proceedings partly due to a clarity objection.

The Technical Board of Appeal identified that the seventh and eighth auxiliary requests were submitted in response to point 85 of decision G 1/19 which states that technical effects can occur at the input of a computer-implemented process and that technical input may consist of a measurement. The amendments aimed to convince the technical board of appeal that the claims were technical by including physical measurements, performed in the real world, into the claims and attempting to link the measurements to features already present in the claims.

When discussing the admissibility of the requests, it was noted that “it is not part of the board’s duties to make suggestions as to how a lack of inventive step or technicality could be remedied, and when the board – or the Enlarged board in this case – effectively does so, this does not give a party the right to have new requests admitted into the appeal proceedings”. However, the board recognised the appeal proceedings at hand were exceptional in that questions were referred to the Enlarged Board of Appeal which have led to a decision clarifying an area of patent law in which conflicting case law could at least have been perceived to exist.

Regarding the assessment of inventive step, the Enlarged Board has pointed out that technical effects could occur at the input of a computer-implemented process and that technical input could consist of a measurement.

The measured inputs included into the seventh and eighth auxiliary requests had the effect of providing a more accurate simulation. However, the board noted, by referring to G 1/19, that even if the added features credibly improved the accuracy of the simulation, this alone could not establish a technical contribution made by the simulation.

The Technical Board of Appeal remarked that the measurement described in the amendment does not include an actual measuring step as they only specify the attributes of the pedestrian profiles have been obtained by a measurement (i.e., one made in the past). The board called into question whether such an amendment has a limiting effect since whether data has been generated by a measurement or by some other method is not a property of the data itself. To proceed with the assessment of inventive step, the board proceeded by assuming the measurements used to generate the attributes are carried out using technical means. With this interpretation, claim 1 was found to consist of a technical step of measuring attributes of pedestrians to provide pedestrian profiles followed by the (computer-implemented but otherwise) non-technical simulation method of claim 1 of the first auxiliary request.

The key question to be answered was whether the technical step and the simulation method are not merely juxtaposed but interact to produce a combined technical effect. For example, simply amending a set of claims to include a physical measurement as an input does not automatically make it technical. As stated in G 1/19, an interaction may be present, for example, if the combination amounts to an indirect measurement of a specific physical entity by means of measurements of another physical entity. An example of which was highlighted in decision T 1892/17 where the simulation features interacted with the technical features of the claim to contribute to a specific technical effect (i.e., the real measurements of power consumption by customers are used to generate time curves resulting in a plan and a prognosis and not a purely virtual effect).

From a high level, the method of claim 1 provides information about the movement of simulated pedestrians through a modelled building structure. The Technical Board of Appeal noted that since the calculated information is neither used in a further step of the method nor specifically adapted for the purposes of an intended technical use, it has to be investigated whether the information represents a measurement of a physical entity (i.e., a real pedestrian).

Crucially, it was noted that the modelled building structure does not correspond to a building structure that was measured, whether directly or through measurement of its physical effects on other physical entities. Additionally, the calculated information about the movement of simulated pedestrians does not represent a direct or indirect measurement of any of the real pedestrians (or other physical entities) that were measured in the process of generating the pedestrian profiles. Thus, none of the modelled pedestrians corresponds to any of the pedestrians involved in the measurements.

The Technical Board of Appeal concluded that in the present case, “no physical entity could be identified which could potentially be measured by the method of claim 1 in the sense that its physical status or some physical property is described by information calculated on the basis of data obtained by a direct or indirect physical interaction with the entity.”

Considering the technical step of measuring attributes of pedestrians in isolation (as it does not interact with the other features of the claim) cannot independently support an inventive step, the seventh auxiliary request was found to lack an inventive step. The eighth auxiliary request effectively only included further details about how the attributes are calculated and was therefore found to also lack an inventive step.

A key learning point from the rejection of the seventh and eighth auxiliary requests, is that when drafting an application relating to computer simulations, if there are any embodiments which involve the use of real world measurements then it is important to link those measurements to physical world benefits instead of merely inserting a measurement step into the method. Recent decisions such as T1892/17 and T0438/14 provide examples of where the use of physical measurements has been considered technical and serve as useful references for applicants.

Auxiliary Requests 10 and 11 - Admissibility

Claim 1 in auxiliary request 10 and claim 1 in auxiliary request 11 are based on claim 37 of the original application, but that claim was dropped before the application entered the European phase.

Claim 1 of auxiliary request 10 is about a method “for controlling movement of an entity through an environment”. The method simulates a single entity as it moves through the environment, and at the end it includes a step of “the entity taking the preferred step”.

Claim 1 of auxiliary request 11 narrowed the scope of auxiliary request 10 by referring to a “robot” rather than an (autonomous) entity.

Auxiliary requests 10 and 11 were submitted in response to a point which was made in the decision G1/19, the point being that technical effects can occur at the output of a computer implemented process and that the technical output could be a control signal used for controlling a machine.

These auxiliary requests were not considered to be admissible by the Technical Board of Appeal, because the amendments substantially change the nature of the invention. The subject matter of the claims was not present in the requests that the examining division refused, and the board decided that it is not possible to switch subject matter at the appeal stage. It is noteworthy that the board considered that the party does not have the right to have new requests admitted even if the board, or the Enlarged Board, effectively make a suggestion about how objections can be remedied.

Summary and Final Remarks

This decision is important because it shows how the latest case law on the patentability of computer simulation software is applied.

If there are any embodiments which involve the use of real world measurements, then it is important to link those measurements to physical world benefits instead of merely inserting a measurement step into the method. Applicants should consider drafting claims so that the claimed data or data resulting from a claimed simulation process is specifically adapted for the purpose of controlling a technical device.