EPO Stays Examination of Applications Relating to Technical Simulations in Light of Enlarged Board Referral

10 May 2019

As reported recently, an EPO Board of Appeal has referred questions to the Enlarged Board of Appeal seeking clarification on the extent to which a computer-implemented simulation of a technical system or process can solve a technical problem by producing a technical effect and thus contribute to an inventive step. The referral is pending as case G1/19.

In the underlying case (T 0489/14), the Board was minded to disagree with the existing case law in this area and so the Enlarged Board’s answers to the questions referred could potentially overturn this well-established case law.

The EPO has now issued a notice in which it immediately stays all cases currently in examination or opposition whose outcome “depends entirely on the outcome of the Enlarged Board of Appeal's decision”. This is a standard practice that allows time for the law to be reviewed without risking depriving applicants of their rights either via refusal of their application or the grant of an invalid patent. However, as Enlarged Board referrals typically require one or two years to resolve, it also introduces a significant delay.

The notice makes it clear that the stay will only be applied where the assessment of inventive step requires deciding whether or not a computer-implemented simulation can be considered to produce a technical effect which goes beyond the simulation’s implementation on a computer.  If cases can be examined without consideration of this issue (for example because there are other inventive technical features in the claims), then the stay will not apply.  The notice also indicates that, solely for the purposes of considering whether or not to stay proceedings, “the term ‘simulation’ is to be interpreted as meaning an approximate imitation of the operation of a system based on a model of that system”, based on point 21 of the Reasons in the referring decision.

The EPO will notify parties in cases affected by the stay and will withdraw any communications on those cases which set time limits for response.  However, in practice, for cases on which there is no outstanding communication from the EPO, the application of the stay may only become apparent when the examiner next considers the application/opposition.

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