Category Archives: EPO Technical Boards of Appeal

EPO Enlarged Board of Appeal to Decide on the patentability of computer simulations

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Summary

The following questions are referred to the Enlarged Board of Appeal for decision:

  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?

1. Introduction

The EPO case law on computer-implemented inventions has been quite stable for the last fifteen years. In particular, there has not been any decision of the Enlarged Board of Appeal (EBA) on this topic since G 3/08 of 12 May 2010.

Basically, a computer-implemented invention can be patented if it solves a technical problem by producing a technical effect. For the assessment of inventive step over the prior art only those features are taken into account, which contribute to the technical character of the invention.

There is, however, no general definition of what is “technical”.

The Technical Board of Appeal 3.5.07 (TBA) now has with decision of 22 February 2019 referred to the EBA the above three questions relating to the patentability of computer-implemented simulation methods. A decision by the EBA could have far-reaching consequences for applicants of computer-implemented inventions in Europe.

2. The invention

The invention disclosed in European patent application No. 03793825.5 and published as  WO 2004/023347 A2 relates to a computer-implemented method of modelling the pedestrian crowd movement in an environment such as a train station.

The modelling can be used to help design or modify the venue (e.g. train station) and for that purpose achieve a more accurate and realistic simulation of pedestrian crowds in real-world situations. The application is based on the insight that human interaction can be expressed and modelled in the same way as interactions of physical objects as e.g. electrons in a semiconductor device.

Claim 1 of the patent application according to the main request of the applicant reads as follows:

“A computer-implemented method of modelling pedestrian crowd movement in an environment, the method comprising:

simulating movement of a plurality of pedestrians through the environment, wherein simulating movement of each pedestrian comprises:

providing a provisional path (9) through a model of the environment from a current location (6) to an intended destination (7);

providing a profile for said pedestrian;

determining a preferred step (112′), to a preferred position (123′), towards said intended destination based upon said profile and said provisional path, wherein determining said preferred step comprises determining a dissatisfaction function expressing a cost of taking a step comprising a sum of an inconvenience function expressing a cost of deviating from a given direction and a frustration function expressing a cost of deviating from a given speed;

defining a neighbourhood (29) around said preferred position (123′);

identifying obstructions in said neighbourhood, said obstructions including other pedestrians (21) and fixed obstacles (25);

determining a personal space (24) around said pedestrian;

determining whether said preferred step (112′) is feasible by considering whether obstructions (21, 25) infringe said personal space over the course of the preferred step (112′).”

3. The Reasoning of the TBA

The TBA is of the view that the claimed invention lacks inventive step over a general purpose computer on the following grounds (section 11 of the decision):

“In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity. Such a link is not present where, for example, the parabolic trajectory followed by a hypothetical object under the influence of gravity is calculated. Nor can the Board detect such a direct link in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment, which is what is claimed here. In fact, the environment being modelled may not exist and may never exist. And the simulation could be run to support purely theoretical scientific investigations, or it could be used to simulate the movement of pedestrians through the virtual world of a video game.”

In the proceedings before the TBA, the applicant has cited the earlier decision T 1227/05 relating to a computer-implemented method for the numerical simulation of an electronic circuit. T 1227/05 states: “An electronic circuit having input channels, noise input channels and output channels, the behavior of which is described by a system of differential equations is a sufficiently determined class of technical subjects, the simulation of which can be a functional technical feature.”

In other words, if the system or method to be simulated is sufficiently technical (expressed in engineering-heavy language ?), then the simulation method itself is also a technical method and for the assessment of inventive step has to be compared with prior art simulation methods, not with the functioning of a general purpose computer.

The TBA consequently held that if the board were “to follow decision T 1227/05, it would have to acknowledge that some or all of the steps of the simulation method of claim 1 contribute to a technical effect of the invention and could thus not be ignored when assessing inventive step” and that it “would hence be necessary to compare the invention with prior art other than a general-purpose computer.”

The TBA, however, still found that it “would tend to consider the subject matter of claim 1 of the main request to lack inventive step over a general-purpose computer” since the claimed method would “assist the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behavior of the virtual circuit or environment designed.” And, “the cognitive process of theoretically verifying its design appears to be fundamentally non- technical.”

4. The referral questions

The TBA therefore referred the case to the EBA for reconciling its own view (citing a number of other earlier decisions as support) with the inconsistent view of T 1227/05. The questions are:

  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?

In effect, the question to decide here is if the required technical effect of a simulation method can be provided not only in the way the simulation program is running on the computer – then the relevant prior art is a general purpose computer – or if this technical effect can be provided also by technical properties of the simulated system (here: the design of the train station; in T 1227/05: the electronic circuit). If the design of a train station with staircases, exits, shops etc. is regarded in the same way as a technical subject matter as the design of an electronic circuit (which in my personal view should not be in doubt), then questions 1 and 2 have to be answered in the affirmative.

The outcome of the referral has in my view implications far beyond simulation programs, for example also to inventions based on machine learning (ML). If you replace in the referral questions “simulation” by “machine learning process”, the same issues arise.

There can be no doubt: If the first two questions of the referral are not answered in the affirmative by the EBA, applicants of various types of computer-implemented inventions in Europe will be in trouble.

 

Twitter: @patentlyGerman

Patent protection for computer system architecture: EPO Appeal Board Decision T 1658/15 “Universal merchant platform for payment authentication”

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Author´s headnotes:

  1. In the assessment of inventive step, the business person is just as fictional as the skilled person of Article 56 EPC. The notion of the skilled person is an artificial one; that is the price paid for an objective assessment. So it is too with the business person, who represents an abstraction or shorthand for a separation of business considerations from technical. A real business person, a real technically-skilled person, or a real inventor does not hold such considerations separately from one another.
  2. Outsourcing a commercial transaction such as the authentication of an online purchase transaction to a different computing device cannot in all cases be abstracted to a purely business activity because it may encompass technical aspects such as the use of plug-ins and servers.
  3. If a prima-facie technical prejudice existed at the relevant date against the outsourcing of a commercial transaction such as the authentication of an online purchase transaction to a different computing device, then this outsourcing involves an inventive step.

The patent application allowed by the decision T 1658/15 of the Technical Boards of Appeal of 29 November 2016 relates to online payment systems.

To complete an online purchase transaction in such systems, the buyer has to be authenticated. The online store passes information about the intended transaction to the credit-card company, which handles the task of ensuring the buyer is entitled to use the chosen payment instrument, and which informs the online shop of the outcome of the authentication procedure. The technical implementation of this authentication involves the server of the online shop communicating with the computer of the credit-card company. This communication is according to the prior art handled by a “plug-in” in the merchant server, a piece of software specific to the particular authenticating authority and to the needs of the authentication process. Different plug-ins are provided for different payment instruments. The update and maintenance of these different authentication plug-ins requires substantial resources of the operator of the merchant server.

To overcome these problems, the claimed invention in the decided case provides a separate computer called “merchant authentication processing system” (MAPS) handling the interface functionality with the authenticating servers, which was previously handled by the corresponding plug-ins of the merchant server. The invention thus replaces the three-machine prior art (buyer computer, merchant server, authenticating server) with a four-machine system (buyer computer, merchant server, authenticating server, and merchant authentication processing system). The invention thus differs from the prior art in the system architecture, namely replacing the several plug-ins for different payment instruments at the merchant server by a separate merchant authentication processing system. The advantage achieved by the invention is to reduce the service costs for the merchant. In addition, the operator of the merchant authentication processing system can offer this service to several different merchants and thus enjoy economies of scale for operating the authentication interface service for the authentication process.

According to the established case law of the EPO (following T 0641/00: Two identities/COMVIK) only technical features of an invention comprising technical and non-technical features can contribute to the inventive step. The technical features are separated from the non-technical features. The non-technical features are implied as being known to the skilled person and only the technical features are compared with the closest prior art. It is then assessed which technical problem is solved by the distinguishing technical features and whether or not this technical solution of the technical problem would have been obvious for the skilled person at the priority date of the application.

This approach often results in a novel and non-obvious technical concept to be divided into a novel and non-obvious concept itself, which is deemed non-technical, lying in the field of business or organization, and the distinguishing technical features, which are regarded only as straightforward technical (mostly software) implementation, which is obvious for the technically skilled person leading to the refusal of the patent application. The “Comvik-Approach” thus often unduly reduces the chances of success of computer-implemented inventions compared to inventions in other technical fields.

The decision discussed here provides an approach to overcome this problem: As the skilled person is a hypothetical construction for assessing inventive step, so should be the the business person or organisation expert providing the non-obvious, but non-technical concept. This business person in the Board´s view “represents an abstraction or shorthand for a separation of business considerations from technical” and as such should – different from a real business person – not have any technical knowledge or capability for technical considerations. The Board states:

“Thus, the notional business person might not do things a real business person would. He would not require the use of the internet, wireless, or XXXX processors. This approach ensures that, in line with the Comvik principle, all the technical matter, including known or even notorious matter, is considered for obviousness and can contribute to inventive step.

Similarly, the notional business person might do things that a real business person would not, such as include requirements that go against business thinking at the time – a sort of business prejudice, as is alleged in this case (see below). If this were not the case, business requirements would need to be evaluated and would contribute to inventive step, contrary to the Comvik principle.”

Applying these principles to the concrete case, the Board finds “that the transaction authentication in the present case cannot be abstracted to a purely business activity because it has aspects such as the use of plug-ins and servers.” Therefore, “the decision to centralise the plug-ins in a separate server that can be accessed by several merchant servers, in order to simplify installation and maintenance and reduce load, should be considered a technical matter”.

The Board considered that it might have been obvious for the skilled person seeking to simplify the merchant server or the installation or updating of plug-ins to locate the authentication interface functionality at a separate server that could be accessed by various merchants’ servers. On the other hand, at the priority date of the application a number of technical considerations spoke against relocation of the plug-ins, as increased latency, increased bandwidth requirements and security considerations. On balance, the Board concluded, there existed “a prima facie case for technical prejudice” against relocating the plug-ins to a separate server and the invention thus is to be regarded as involving an inventive step.

According to the Board´s decision, the selection of a favorable system architecture for a particular technical issue is thus to be regarded as a patentable invention if its technical implementation is not obvious even if such system architecture may be regarded obvious from a business perspective.

The technical problem solved by the claimed invention in the decided case can thus not simply be formulated as “to reduce the maintenance and update requirements of the merchant server” as this would be not a technical, but a commercial problem. The business person intending to solve this commercial problem would in turn formulate for the technically skilled person the technical problem “to provide a technical solution to reduce maintenance and update requirements of the merchant server”. The skilled person would thus consider – independently from any business considerations – different options to solve this technical problem, including amendments at the level of the merchant server itself as well as changes of the system architecture. As the Board found, the provision of the particular system architecture of the claimed invention, namely to provide a separate merchant authentication processing system handling the interface functionality with the authenticating servers, was not obvious for the skilled person at the priority date.

This decision may also prove to be helpful for inventors seeking to obtain patent protection in Europe for distributed or serverless applications based on distributed-ledger or blockchain technologies if the application of these technologies for the particular task was not technically obvious at the respective priority date.