A simulation claimed as such can support inventive step, but only through a technical effect beyond running it on a computer

2021-03-10EPO

Decision of the Enlarged Board of Appeal G 1/19 (10 March 2021), Pedestrian simulation / Bentley Systems, ECLI:EP:BA:2021:G000119.20210310, on the referral by Technical Board of Appeal 3.5.07 in interlocutory decision T 489/14 (22 February 2019) concerning European patent application No. 03793825.5

The Enlarged Board of Appeal of the European Patent Office answered three questions referred by Technical Board 3.5.07 in an appeal by Bentley Systems (UK) Limited on an application titled "Simulation of the movement of an autonomous entity through an environment," which claims a computer-implemented simulation of pedestrians moving through a building. The Enlarged Board, chaired by Carl Josefsson, held first that a computer-implemented simulation of a technical system or process claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation's implementation on a computer. It held second that it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process. It held third that the answers are no different if the simulation is claimed as part of a design process, in particular for verifying a design. The reasons apply the COMVIK approach to simulations, state at point 88 that a direct link with physical reality cannot be a necessary condition, recognize at point 94 a potential technical effect where output data is specifically adapted for the purposes of its intended technical use, and state at point 98 that calculated data is mere data which can be used in many different ways, with an implied technical use only in exceptional cases.

What it changesFor a machine learning claim at the European Patent Office, the model's output is the whole case. Information produced by a model earns no inventive-step credit on the ground that the model reflects physics, biology or any other technical domain; the decision says that argument is not sufficient. Credit comes from one of two places, and the claim should recite one of them: an output specifically adapted to a technical use, such as a control signal for a device or a measurement with a stated physical meaning, or an implementation that improves the computer itself, such as memory use, latency or parallelization. A claim that ends at a prediction, a score or a ranking will be treated as calculated data usable in many ways, and the applicant will be arguing for an exceptional case. European claim sets drafted from United States applications should add the technical use as a positive step, and the specification should explain the adaptation of the output rather than only the quality of the model.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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