Yesterday, the Enlarged Board of Appeal heard three referred questions in case G 1/19, over the patentability of computer simulations. This follows the Technical Board of Appeal referring the questions to the Enlarged Board of Appeal at the European Patent Office in February 2019. The case is notable due to its potential importance in future computer simulation applications. It was also the first live-streamed Enlarged Board of Appeal hearing open to the public.
16 July 2020 by Amy Sandys
Yesterday’s hearing in front of the Enlarged Board of Appeal concerned a referral made by the EPO’s Technical Board of Appeal. In February 2019, the technical board referred questions in case G 1/19, on the grounds that the Enlarged Board of Appeal should clarify the case law on computer simulations under the European Patent Convention (EPC).
In 2013, the Examining Division at the EPO refused the initial patent application. A Technical Board of Appeal held oral proceedings in April 2018. This led to the referral of questions to the Enlarged Board.
The original application, EP 15 46 948, is entitled “Simulation of the movement of an autonomous entity through an environment”. The Enlarged Board of Appeal focused largely on whether computer-simulated inventions need a ‘direct link with physical reality’ to be patented, for example a tangible manufacturing step, or if having ‘technical effect [and] purpose’ is sufficient.
Accordingly, yesterday the Board considered what is patentable in the realm of computer simulation technology. It also looked at to what extent the Boards of Appeal can consider the technical aspects of the invention. During the hearing Pawel Piotrowicz, patent attorney and applicant behind G 1/19, argued that the Boards of Appeal should uphold its former approach to patenting software inventions, taken in a previous case over Infineon Technologies (T 1227.05).
In upholding this approach, Piotrowicz argued the EPO would enable future innovation in the software patenting and AI fields. But this approach would not just benefit communication technology. Adopting a less restrictive approach would allow other industries, such as pharmaceuticals, to adopt computer simulations in developing new applications. A more flexible approach to patenting computer simulations would also ready the EPO for a more digitised future.
In February 2019, during the appeal proceedings, the Technical Board of Appeal 3.5.07 noted similarities between G 1/19 (known here as T 489/14), and the Infineon case. The latter case concerns a patent owned by Infineon Technologies pertaining to circuit simulation. G 1/19 is concerning a computer simulation of a pedestrian crowd through an environment.
In Infineon, the Technical Board of Appeal found that “simulation of a circuit subject to 1/f noise constitutes an adequately-defined technical purpose”. As such, the board found the simulation patentable. During the G 1/19 technical hearing, the board also found that the Infineon judgment supports the reasoning behind G 1/19.
However, despite the similarities between the Infineon and G 1/19 cases, the technical board questioned to what extent the reasoning in Infineon was applicable in G 1/19. As such, it referred three questions to the Enlarged Board of Appeal. The purpose of yesterday’s hearing was to establish a more uniform application of the case law, which currently is at odds across European courts and patent offices. For the appellant, it was an opportunity to provide an alignment between the case law in Infineon, and in case G 1/19.
However, yesterday the Enlarged Board of Appeal did not reach a decision. Involved parties speculate the Enlarged Board will publish its decision in September or October 2020.
The Enlarged Board of Appeal recieved three questions. Simply put, these explored whether computer simulation are patentable; if yes, which sorts of simulations are patentable and if the simulation can be based on technical principles; and how the answers would differ if the simulation related to the design process. The full questions in the referral are available here.
In a previous case over computer programmes, G 3/08, questions had focused heavily on admissibility. As such, admissability formed a key part of yesterday’s procedure.
Carl Josefsson, president of the EPO Boards of Appeal, permitted all questions as admissable. However, the Enlarged Board was not in full agreement that the first part of question two was admissable.
Furthermore, the Enlarged Board of Appeal suggested the answer to the second part of question two might be ‘no’. The final answer will not be clear until the Enlarged Board of Appeal releases a decision, although observers do not expect this until autumn.
Either way, the decision will set a new bar in how the EPO takes into consideration technical aspects during patent applications. In the meantime, the EPO has stayed all proceedings before the EPO examining and opposition divisions which relate to the issues raised in G 1/19.
According to the EPO president António Campinos, the stay is in force until the Enlarged Board of Appeal issues its decision.
Since the global coronavirus outbreak, patent courts and patent offices have sought new ways to undertake their daily work. A recent survey conducted by JUVE Patent saw many respondents express interest in a future whereby video hearings and in-person hearings were both potential options.
While many courts, such as the UK High Court in London and Regional Court of Munich, readily embraced video conferencing technology from the beginning, other courts are only now beginning to adopt new software methods. As such, the EPO’s first live-streamed hearing was yesterday, over computer simulations in G 1/19. The video hearing itself had capacity for 3000 observers; in his welcome statement, Josefsson acknowledged that over 1,600 observers tuned into the video stream.
Yesterday’s use of video conferencing is especially noteworthy, given the rarity of Enlarged Board of Appeal hearings. These tend to happen only twice or three times a year. While the public have always been able to attend such hearings in-person, patent attorneys hope yesterday’s hearing will set a precedent for a wider global audience.
Patent attorney and partner at Venner Shipley, Pawel Piotrowicz has been involved in all instances in front of the EPO since filing the initial application in 2002.
The Maia Institute, a research institution in Monaco, filed the initial patent application. However, Douglas Connor, the individual behind the initial case then recieved the case. The application then went to the UK subsidiary of Bentley Systems. The latter organisation is behind the current appeal.
For Bentley Systems UK
Venner Shipley (London): Pawel Piotrowicz (partner, patent attorney)
Venner Shipley (Munich): Ralf Bucher, Michael Fischer (both patent attorneys)
Enlarged Board of Appeal, European Patent Office, Munich
Carl Josefsson (chairman), Ingo Beckedorf, Fritz Blumer, Adem Aslan, Tamás Bokor, Gunnar Eliasson, Andrea Ritzka.
Heli Pihlajamaa, Doris Thums, Miguel Domingo Vecchioni (Representives of president António Campinos; independent to Enlarged Board of Appeal)