G 1/19 - Inventive step of computer simulations

Key points

• In this decision 10.03.2021, the Enlarged Board confirmed that the Comvik-approach to the assessment of inventive step is also to be applied to claims directed to computer-implemented simulation methods.
• The Enlarged Board added that “for that assessment 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” (headnote 2). This headnote may be somewhat cryptic. 
• The case was remitted back* to the Technical Board of Appeal for a decision on inventive step of the claims at issue. The TBA has issued a preliminary opinion wherein the TBA concludes that the Enlarged Board's answer does not fully decide the case. Hence, the TBA still has to decide on inventive step. The TBA refers in particular to para. 128 of G 1/19 as giving guidance. 
• Therein the Enlarged Board said that in its view, “calculated numerical data reflecting the physical behaviour of a system modelled in a computer usually cannot establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflects the behaviour 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...)”
• * = strictly speaking, the appeal case is pending with the TBA during the time that the referral of questions is pending with the EBA, so the EBA's order does not include a remittal.
• I also highlight that the Enlarged Board in r.110 held that “Following the COMVIK approach, models underlying a simulation form constraints (technical or not) which are not technical for the purposes of the simulation itself. However, they may contribute to technicality if they are, for example, a reason for adapting the computer or the way in which the computer operates, or if they contribute to technical effects relating to the results of the simulation.”
  
  
• In AR-4, the simulation method is claimed as part of a design method. The TBA notes that the description makes clear that the step of revising the designed model in dependence upon the simulated movement of pedestrians through the modelled building structure, can be done by a human designer. Therefore, the design step feature is not technical and does not contribute to inventive step, in view of para. 143 and 144 of G 1/19, according to the preliminary opinion. For this it is also relevant that data representing a model of a building structure appears to have no implied technical use that can be the basis for an implied technical effect, referring to point 98 of G 1/19, because such data can be used for a variety of (technical and) non-technical purposes, for example in a video game. The claim also does not specify how the simulation results are used to modify the design model. 
  
  
• The whole decision G1/19 deserves careful reading and study.

 G 1/19  - G 0001/19

https://www.epo.org/law-practice/case-law-appeals/recent/g190001ex1.html

decision text omitted.