Software inventions under the spotlight before the EPO’s Enlarged Board of Appeal
First referral to EBoA concerning the patentability of computer implemented inventions since 2008

Three questions have been referred to the Enlarged Board of Appeal following an appeal (T 0489/14) against a refusal of an application relating to a computer-implemented invention. This is the first such referral to reach the Enlarged Board of Appeal in relation to computer-implemented inventions since the dismissed referral from the EPO President in case G3/08 back in 2010. The outcome of the present referral may well be indicative of the development of the EPO’s approach to software inventions. The Carpmaels & Ransford Tech team will be following the referral closely and shall report the outcome of the referral when it is issued.

The refused application relates to a computer-implemented method of simulating pedestrian motion. The application was refused for an alleged lack of an inventive step. The method aims to accurately model the paths of interacting pedestrians through an environment, which may assist in the design or modification of a venue, such as a train station. The presented arguments for inventive step include citing T 1227/05 to support the contention that the simulation constitutes an adequately defined technical purpose for a computer-implemented method.

The three questions that have been referred are as follows:

  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?

The referral arises as the Board of T 0489/14 identified a conflict in the Board’s view of how to assess the inventiveness of computational simulations with the reasoning proposed in previous decisions. In particular, the Board disagrees with the reasoning in T 1227/05, which found a computational simulation of a circuit to be technical and inventive, despite the absence of any direct physical effect. Since the Board accepted that the decision in T 1227/05 supported the appellant’s case for inventive step, a referral was necessary to resolve the conflict.

The answers to the questions referred should provide clarity on whether it is possible to obtain protection via the EPO for software that simulates a design, where the step of physically implementing the design is not actively claimed. If the Enlarged Board of Appeal decides that it is indeed possible to protect a simulation in isolation, this could be a boon for software developers that are not involved in the manufacturing process relating to their software. In any event, for patent applications relating to design simulations, it is often beneficial to include fall-back claims to the use of the simulation in a physical task. Claims of this type may be necessary to bring certain applications to allowance, depending on the outcome of this case.

A decision to allow protection for this type of subject matter will confirm what many practitioners have been seeing in recent years which is that the EPO has been moving in a direction which is becoming more accepting to computer-implemented subject matter.