European patent problems in computer-implemented inventions
In February 2019, a request known as G1/19 regarding the patentability for simulation methods was sent to the Enlarged Board of Appeal. The call for a change in patentability for simulation methods is to soften the strict practice applied by EPO for computer-implemented inventions. This act was considered highly opportunistic by the patent experts in this field.
Consequently, the Enlarged Board of Appeal had receiver 23 amicus curiae briefs regarding this case. Many requests came from international organizations and corporations such as e.g. Philips, Siemens, and IBM. Click here for more detail of the amicus curiae briefs.
The decision has now been issued by the EPO. However, it preferably goes the other way around. The decision announced by EPO authenticated that the so-called COMVIK approach should be used for all computer-implemented inventions.
A controversial topic of computer-implemented inventions
Many renowned experts in the patent field regarding this simulation method has raised the question that whether a computer implemented invention must have a ”direct link with physical reality” or if it is enough for the computer implemented invention to have a ”potential technical effect” (an effect achieved only in combination with non-claimed features).
This concern about the topic was determined to be unsuitable (and thus never discussed) in the previous Enlarged Board decision G3/08.
This question of ”potential technical effect” often arises when the output of the computer-implemented invention is data of some type. G1/19 determines that the technical use of such data ”has to be at least implicitly specified in the claim” (see section 137 of G1/19). It is explained in section 98 of G1/19 that ”data about a calculated technical effect is just data, which may be used, for example, to gain scientific knowledge about a technical or natural system, to make informed decisions on protective measures or even to achieve a technical effect.
The wide scope of a claim concerning the calculation of technical information with no limitation to specific technical uses would routinely raise attention for the principle that the claimed subject matter has to be a technical invention over substantially the whole scope of the claims”.
A ”technical use” of data
Some passages in the G1/19 has clarified what “technical use” of data means:
- ”In the Enlarged Board’s view, calculated numerical data reflecting the physical behavior of a system modeled in a computer usually cannot establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behavior adequately reflects the behavior of a real system underlying the simulation. Only in exceptional cases may such calculated effects be considered implied technical effects (for example, if the potential use of such data is limited to technical purposes)” (section 128)
- ”While improved weather forecasting can certainly not contribute to the technical character of an invention if the claim is directed to the forecasting of a value of a financial product, it probably can do so if the weather forecasting data is used, for example, to automatically open or close window shutters on a building” (section 131)
Thus, a computer-implemented method where the output is just data is often not patentable. Nevertheless, an important exemption is when the design can be considered to be a ”measurement method”. Section 99 of G1/19 states that ”The calculation of the physical state of an object (e.g. its temperature) is typically part of a measurement method. It is generally acknowledged that measurements have technical character since they are based on an interaction with physical reality at the outset of the measurement method. Measurements are often carried out using indirect measurements, for example, the measurement of a specific physical entity at a specific location by means of measurements of another physical entity and/or measurements at another location. Even though such indirect measurements may involve significant computing efforts, they are still related to physical reality and thus of a technical nature, regardless of what use is made of the results”.
Technical considerations of the internal functioning of the computer
Another circumstance when a computer-implemented method is patentable is when it relates to ”technical considerations of the internal functioning of the computer”. Section 112 of G1/19 e.g. states that ”an algorithm may be particularly suitable to be run on a computer in that its design was motivated by technical considerations relating to the internal functioning of the computer”. Still, any such ”adaptions of the computer or its functioning” also have to be ”at least implicitly specified in the claims”, according to section 137 of G1/19.
It is however a very typical situation that computer-implemented inventions do not correlate with measurement methods or to the internal functioning of the computer. Besides, there is no direct link with physical reality. In this situation, it may still be plausible to achieve patent protection in Europe. Yet, it can only be done if the patent application is described in precise and comprehensible detail. If it can be argued that the computer-implemented invention does not link simply to software (even if it does), but to a system that sends signals between its distinct parts (where these signals are processed and cause various actions in the various parts of the system), the possibilities to have a European patent protection increases remarkably.
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