We’re pleased to bring to you a guest post by our former blogger Rajiv Choudhry, discussing a recent decision by the Enlarged Board of Appeals at the European Patent Office on patentability of simulations and its implications for Indian patent law.
Rajiv is a practicing advocate based in New Delhi. He specialises in IP law, with a focus on high – technology and patent law and advises/represents clients on SEP/FRAND and other issues related or unrelated to those discussed in the post. He’s also a founder member of the Fair Standards Alliance, a not-for-profit body that advocates fairness in patent licensing. The views expressed in the post are personal. Rajiv’s previous posts on the blog can be viewed here, here, here, here, here and here.
European Decision on Patentatability of Simulations and Implications for India
Last month, the Enlarged Board of Appeals at the European Patent Office issued a decision in G1/19 relating to patentability of simulation software. Simulation is a term of the art and requires a bit of explanation: A Google search for “simulation” brings up the definition of simulation as “the production of a computer model of something, especially for the purpose of study.” For example, one could prepare a model that mimics the operation of an existing / proposed system.
This term is to be differentiated from emulation, which is defined as: “reproduction of the function or action of a different computer, software system”.
Though the terms simulation and emulation are used interchangeably, the distinction is important and will be revisited again at the end of the post.
European patent application 03793825.5 provides a computer-implemented simulation of movement of a pedestrian crowd through an environment such as a building. This simulation is useful in plotting the path of a vehicle.
The application was refused by the examiner on the ground that the invention lacked an inventive step, mainly because simulation was considered not to contribute to the technical character of the invention.
On appeal against the decision, the Board of Appeal referred three questions on the patentability of computer-implemented simulations to the Enlarged Board of Appeal under Article 112(1)(a) of the European Patent Convention (EPC).
Article 52(2) EPC (similar to our Section 3) provides a list of subject-matter which is not patentable because it is not technical. This list includes “programs for computers” (Article 52(2)(c) EPC). But this exclusion from patentability is limited to “the subject-matter or activities as such” (Article 52(3) EPC). This ‘as such’ is parallel to our ‘per se’ and hence the two provisions are almost identical.
Under the EPC, claims to a computer implemented invention usually has two parts: technical features, for example a computer or a mobile phone, and non-technical features, for example a computer program.
An invention having both technical and non-technical features is adjudged for inventive step under what is called as the COMVIK approach. Under this approach, only the technical / hardware / structural parts are considered for the assessment of inventive step. Other non-technical features that in the context of the claimed invention, contribute to the technical solution of a technical problem, and hence the overall technical character of the invention are considered to be contributing to the assessment.
The Patent Application
|Whereas the prior art described in the application used macroscopic models for such purposes (e.g. describing a pedestrian crowd as a quasi-uniform medium, such as a fluid, without regard to individual pedestrians), the approach used in the application is based on the modelling of an individual pedestrian with their own individual intention of reaching a destination, a personal profile – which may include a preferred walking speed and/or a step length – and a surrounding personal space in which the absence of obstacles (building structures and other pedestrians) is sought…
Fig. 2 of the application shows, as a simple example, the possible movement of a pedestrian (5) from a starting location (6) to an ultimate destination (9), moving around walls (2) and other fixed obstacles (4) while avoiding other pedestrians (10).
Original Claim 1 As Filed
“1. A method of simulating movement of an autonomous entity through an environment, the method comprising:
providing a provisional path through a model of the environment from a current location to an intended destination;
providing a profile for said autonomous entity;
determining a preferred step towards said intended destination based upon said profile and said provisional path;
determining a personal space around said autonomous entity;
determining whether said preferred step is feasible by considering whether obstructions infringe said personal space.”
During the examination proceedings, the claims were limited to being “computer-implemented” and by further limiting the parameters “preferred step” taken by autonomous entity.
The examining division held that only the use of a computer contributed to the technical character of the claimed method. Hence the technical problem to be solved was formulated as technically implementing a method of simulating the movement of an autonomous entity through an environment comprising the steps defined in the claim. Hence the solution of the problem, namely the use of a computer, was not inventive.
Question/s Referred to the Enlarged Board of Appeals
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?
“The Board of Appeals came to the conclusion that the COMVIK approach applies to computer-implemented simulations. It held that such simulations must be assessed according to the same criteria as any other computer-implemented invention, including with regard to the question whether a claimed feature contributes to the invention’s technical character. Any technical effect going beyond the normal electrical interactions within the computer on which the simulation is implemented (i.e. any “further technical effect”) may be considered for inventive step. …For the assessment whether a simulation contributes to the technical character of the claimed invention, it is not decisive whether a technical or a non-technical system or process is simulated.”
The Board stated that a claimed feature of a computer-implemented invention may contribute to the technical character of the invention not only if it is related to a technical effect in the form of input (e.g. the measurement of a physical value) or output (e.g. a control signal for a machine). A direct link with physical reality is not required in every case.
In particular, technical effects may also occur within the computer-implemented process (e.g. by specific adaptations of a computer or of data transfer).
“…[A] computer-implemented invention may have technical character and a feature may contribute to the technical character of the invention with respect to only parts of the claimed subject-matter. For example, an increased speed for an inventive data transmission method (constituting the technical effect) can only be achieved if the size of transmitted data packets exceeds a certain minimum size. In such a case, it may be necessary to limit the size of the data packets accordingly in the corresponding claim feature. The limitation of the claimed subject-matter to a scope for which a technical effect may be acknowledged can be achieved by adding further limiting features, such as steps establishing an interaction with external physical reality.”
Reasoning for evaluating technical process
It is instructing to see the reasoning process adopted by the Board in paras 85-86.
“85. The above figure shows – in a simplified, non-exhaustive form – how and when “technical effects” or “technical interactions” may occur in the context of a computer-implemented process. The arrows represent interactions that are different from abstract data input, data output or internal data processing or transfer. 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. Adaptations to the computer or its operation, which result in technical effects (e.g. better use of storage capacity or bandwidth), are also examples of features that may contribute to inventive step (for a list of examples and references to the relevant board decisions, see T 697/17, Reasons, point 5.2.5). In sum, technical effects can occur within the computer-implemented process (e.g. by specific adaptations of the computer or of data transfer or storage mechanisms) and at the input and output of this process. Input and output may occur not only at the beginning and the end of a computer-implemented process but also during its execution (e.g. by receiving periodic measurement data and/or continuously sending control signals to a technical system).
86. It is self-evident that the input and output are always nothing other than data, if only the data processing within the computer is considered. Computer-implemented processes, however, often include features – which could be technical or non-technical per se – that reflect the interaction of the computer with the external world. As explained above, it is not possible to exhaustively describe (or represent in graphical form) every type of feature of a computer-implemented invention that may contribute to the invention’s technical character.”
Implications for Indian Patent Law
Given the almost similar wording of Section 3(k) of India’s Patents Act to that of Article 52(2)(c) of EPC, it would be of note to practitioners to note this decision. Inventions / claims relating to simulation should be patentable in India given the reasoning provided by the Board.
Emulation and simulation
Given the proper definition of the two, emulation claims are generally patentable. I like to think of emulation as being done as a machine implementing / mimicking another machine. So the connection to hardware is pretty apparent.
For simulation, this connection with hardware is not that clear. However, if ones equates simulation to a possible set of inputs and outputs for a machine to act in a scenario, it is patentable as has been decided by the Board.