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New developments in German patent law

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

Posted on March 1, 2019 by Alexander Esslinger

Summary

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

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?
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?
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:

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?
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?
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

IP5 offices CS&E pilot project: 500 PCT applications over the next 2 years will receive within 9 months an International Search Report jointly prepared by the five largest IP offices (CN, US, EP, JP, KR)

Posted on August 1, 2018 by Alexander Esslinger

The world´s five biggest IP offices (collectively named IP5) started on July 1, 2018 a Collaborative Search and Examination (CS&E) pilot project to allow applicants of PCT applications upon request to receive an early search report including a provisional written opinion on patentability drawn up jointly by examiners of the Chinese, US, Japanese, Korean and European patent offices. This allows applicants to get an early assessment of the chances of success of a patent application based on a broader perspective of different prior art databases, search strategies, languages, and examiner expertise.

The applicant-driven procedure (see official illustration) starts with a request filed by the applicant with the Receiving Office, which will be transmitted to the International Bureau (IB) and the competent International Searching Authority (ISA), which has to be one of the IP5 offices.

The competent ISA will then assesses whether the requirements (see below) are met and will notify the applicant and the IB whether or not it accepts the request for participation in the pilot. The competent ISA (now main ISA) then carries out a search, prepares a search report and a provisional opinion on patentability. These are made available to the “peer” examiners at the other four IP offices through a safe ePCT-based platform. The peer examiners will provide the main examiner with their contributions, taking into consideration the provisional international search report and written opinion of the main ISA. The final international search report and written opinion will be established by the main examiner after consideration of the contributions from the peer examiners, which is in turn submitted to the applicant or its representative, if possible, within the time limit under Rule 42.1 PCT, i.e. within nine months from the earliest priority date of the PCT application.

Each of the participating offices will admit about 100 PCT applications to the pilot throughout a two-year period starting on July 1, 2018 such that in total 500 PCT applications will be participating. A common set of quality and operational standards will be applied by all collaborating offices. The CS&E pilot project is scheduled to continue until June 1, 2021 and will then be jointly assessed by the participating offices.

During the pilot phase the cost of the jointly prepared search report and written opinion is that of a normal PCT chapter I search at the competent ISA. The applicant thus gets the additional search and examination results from the other four offices for free. If the CS&E will be implemented as a regular product, however, higher fees are to be expected.

The requirements for participating at the CS&E pilot project are the following:

The request for participation in the pilot must be submitted using the standard form and filed together with the international application at the Receiving Office or the IB.
Until languages other than English are accepted into the pilot, the participation form and the international application must be filed in English.
One applicant cannot file more than 10 requests for participation in the pilot at a same main ISA.

If the pilot turns out to be successful, the collaborative work of peer examiners of the IP5 offices could bring a huge benefit for patent applicants. It may also allow a glimpse at a future international patent system harvesting international cooperation and standardization to avoid duplicated work and bringing faster, more cost-effective procedures for the applicants. Earlier knowledge about the patentability of an application also brings benefits to the industry as a whole and contributes to make the patenting process itself more transparent and efficient.

twitter: @patentlyGerman

CRISPR EP patent update: 7 oppositions filed against Berkeley CRISPR EP patent

Posted on March 24, 2018 by Alexander Esslinger

The patent dispute relating to the revolutionary CRISPR-Cas9 gene-editing technology between the Broad Institute (jointly operated by Harvard and MIT) on the one side and UC Berkeley on the other side is is heating up in Europe.

On January 17, the Broad Institue lost its first granted CRISPR EP patent in first instance opposition hearings. An appeal against this decision has immediately been filed on January 18 by the patent proprietor.

On the other hand, the University of Berkeley (together with the University of Vienna and Emmanuelle Charpentier) filed it´s first patent relating to CRISPR technology even before the Broad Institute already on March 15, 2013 claiming the earliest priority on May 25, 2012. The resullting patent EP 2 800 811 was granted with main patent claim 1 as follows:

“1. A method of modifying a target DNA, the method comprising contacting the target DNA with a complex comprising:

(a) a Cas9 polypeptide and
(b) a single-molecule DNA-targeting RNA comprising:

(i) a DNA-targeting segment comprising a nucleotide sequence that is complementary to a sequence in the target DNA, and

(ii) a protein-binding segment that interacts with said Cas9 polypeptide, wherein
the protein-binding segment comprises two complementary stretches of nucleotides that
hybridize to form a double stranded RNA (dsRNA) duplex,

wherein said two complementary stretches of nucleotides are covalently linked
by intervening nucleotides,
wherein said contacting is in vitro or in a cell ex vivo; and
wherein said modifying is cleavage of the target DNA.”

A restriction to either eukaryotic or procaryotic cells (which played a major role in the parallel US interference proceedings) seems not to be present. The contacting of the target DNA to be modyfied by the method according to the claim, however, has to take place in vitro or in a cell ex vivo.

The mention of grant of the patent was published on May 10, 2017.

Within the 9-month opposition term ending February 10, 2018 seven parties have filed an oppositions, namely:

Opponent 1: DF-MP Dörries Franck-Molnia & Pohlman
Opponent 2: Onno Griebling
Opponent 3: TL Brand & Co. Ltd.
Opponent 4: HGF Limited
Opponent 5: Jones Day
Opponent 6: Allergan Pharmaceutical International Ltd.
Opponent 7: Elkington & Fife LLP.

Of these opponents only one, Allergan Pharmaceutical International Ltd., is clearly identifiable, the other six oppositions are filed by IP firms acting as so-called “strawmen” for opponents which do not want to be identified. This practice explicitly allowed by the EPO is common in the pharmaceutical industry in Europe.

All opposition grounds are raised, namely lack of novelty and lack of inventive step, lack of enabling disclosure of the patented technical teaching, and extension beyond the content of the original application (added matter). Despite the huge amount of documents filed, a first instance decision in these opposition proceedings can be expected in approximately 18 months.

Disclaimer: Neither I myself nor the patent firm Betten & Resch, of which I am a partner, are representing clients involved in any patent cases relating to CRISPR-cas9 technology.

Twitter: @patentlyGerman

Blockchain patent activity increases – but granted patents are still rare in this field

Posted on February 14, 2018 by Alexander Esslinger

Since late 2015 a considerable media hype could be observed around cryptocurrencies and blockchain technology, or, more generalized, distributed ledger technology. Is this hype reflected by a corresponding rapidly rising number of patent applications ?

The following diagram shows the number of US-, EP- and PCT patent applications (source: Derwent Innovation patent database) since 2011 as well as granted US and EP patents containing the expressions “blockchain” or “bitcoin” or “distributed ledger” in the title, the abstract, or the claims. The x-axis represents the year of the first filing date (priority date) of a patent family; applications filed both e.g. in the US and in Europe are thus counted only once.

The diagram shows a siginificant increase of the patent activity from 20 patent applications in 2013 to 324 patent applications in 2016, but not a hype. One must keep in mind, however, that patent applications are in general published only 18 months after the earliest filing date. The development in the last 18 months is thus not visible in this diagram. Moreover, many blockchain projects are open source and do not seek patent protection.

The number of patent grants (which are publidhed without delay) shows only very modest numbers. In 2017, 21 US patents and 1 EP patent relating to blockchain technology have been granted.

The top 10 patent applicants (assignees) are shown in the following diagram:

US applicants dominate, lead by Mastercard with 44 applications, bearing in mind that Chinese national applications are not included. The most important applicants from Europe are Nchain, the vehicle of “would-be Satoshi Nakamoto” Craig Wright and British Telecom, owning the single granted European patent relating to blockchain technology.