EPO Technical Board of Appeal 3.5.07 has, in case T 0489/14 (Pedestrian simulation/CONNOR), referred questions to the Enlarged Board of appeal concerning what is to be considered technical in the fields of design and simulation. The cases of Designing optical systems/Philips and Circuit Simulation I/Infineon have long been cited as precedent that the design or simulation of a technical system is itself technical and eligible for patent protection. However, some more recent cases have put limits on that proposition, suggesting that the technical system must be defined with sufficient specificity and that the purpose of the simulation might also be relevant.
In this case, the Board was minded to disagree with the Infineon case and so referred the following questions to the Enlarged Board:
The Enlarged Board’s answers to these questions could therefore potentially overturn some fairly well-established case law.
A referral to the Enlarged Board may be made by a Technical or Legal Board of Appeal if that Board considers it necessary “to ensure uniform application of the law, or if a point of law of fundamental importance arises”. Such cases are quite rare and there has not been a referral in the software field since 2010. The Enlarged Board may seek amicus curiae briefs and is likely to give an answer in 18 months to two years.
The invention at issue in Connor concerned the simulation of the movements of pedestrians through buildings, with the ultimate aim of improving the design of those buildings. The applicant argued that the invention produced a technical effect of “a more accurate simulation of crowd movement” which under Infineon is an adequately defined technical purpose. The Examining Division disagreed and rejected the invention as lacking inventive step over the notorious prior art of a general purpose computer, asserting that the invention was the straight-forward implementation of a non-technical problem. On the premise that simulation of the movement of people is non-technical, this rejection would be consistent with case law that non-technical aims and features cannot contribute to inventive step.
In Connor the Board considered that the technical implementation of the simulation was “straightforward, requiring only basic knowledge of data structures and algorithms” so that the inventive step of the invention turns on whether the nature of the system being simulated is technical and so can be taken into account in judging inventive step. The Board grudgingly accepted the applicant’s argument that the simulation was analogous to simulating movement of an electron using numerical methods but still considered it unduly abstract. The Board considered that the invention (at least in the broadest claims) did not have “a direct link with physical reality” because it could be used for hypothetical simulations or in video games. Therefore the Board was minded to refuse the application but for the precedent of the Infineon case.
The Board accepted that the simulation in Connor was analogous to that in Infineon and so ought to be patentable under the reasoning of Infineon. However, the Board “is not fully convinced” by the reasoning of Infineon and the questions referred could overturn or reduce the precedent effect of Infineon.
The first question referred to the Enlarged Board seeks to test Board 3.5.07’s view that “a technical effect requires a direct link with physical reality” and that it is not enough for technical character that a technical (i.e. physical) system is simulated. However, a negative answer to this question would imply that no modelling or simulation inventions were patentable.
The second question, to be addressed if the Enlarged Board considers that something more than merely simulating a technical system is required, asks what more is required. The question implies that it is at least necessary that the simulation be based on technical principles underlying the systems. This would perhaps exclude some recent cases relating economic modelling of wind farms and mobile phone networks.
The final question addresses the common fall-back position in simulation and design cases: to include a step of manufacturing or controlling something physical. This has long been thought to be a safe port of last resort, especially since the UK case of Halliburton v Comptroller-General of Patents  EWHC 2508 (Pat). If the Enlarged Board were to decide that inclusion of such features is not sufficient to save a claim to a design or simulation method, a great many cases would be affected.
It should be noted that the Enlarged Board could reformulate the questions and is not in any way bound to follow the provisional views expected by the Technical Board.
Further developments will be reported in due course.
28 February 2019