We have previously brought attention to a recent referral to the European Patent Office's Enlarged Board of Appeal concerning the question of whether a computer-implemented simulation of a technical system or process could be patentable in and of itself, provided that the simulation could give rise to a technical effect above and beyond the simulation's implementation on a computer.
The President of the European Patent Office has now submitted comments on the referral to the Enlarged Board of Appeal. The comments represent an interesting set of arguments broadly in support of the notion that such a simulation could at least in principle be patentable. Rather than rehashing the full comments here, we consider it more broadly informative to take a close look at its summary.
First, it is evident both from the summary and the comments as a whole that the Office's arguments are based on the idea that the statutory exclusions from patentability in the European Patent Convention should be interpreted narrowly, and that a "dynamic understanding" should be applied to the terms "technical" and "technology".
That the statutory exclusions are to be interpreted narrowly seems, to us, to be self-evident. The Convention itself says that the categories of endeavour excluded from being inventions – categories like "presentation of information", "computer programs" and so on – are only excluded to the extent that they are claimed "as such". Disclosures and claims extending beyond these excluded categories may therefore be considered potentially patentable; this has been the consistent interpretation of the statute to date.
Somewhat more interesting is the suggestion that what is to be understood as "technical" can change to accommodate technological developments. The idea of technicality, and the related notion that an invention should provide a technical solution to a technical problem, has been developed over the years by EPO case law, so there's a "dynamic" understanding to the extent that the case law continues to develop.
However, the comments seem to go further than this, noting that our very definition of technicality and technology may need to evolve and develop as new possibilities arise. Quite simply, as technological progress continues, it opens up opportunities which nobody would have imagined as being technically feasible in past eras – and thus the swathe of things which can plausibly be described as "technical", as opposed to sheer imaginative fantasy, becomes broader and broader.
In 1943, Thomas Watson – then the president of IBM – speculated that there would be "a world market for maybe five computers". This prediction proved spectacularly wrong, because new technological advances (including those accomplished by IBM themselves) not only made possible a miniaturisation of computing technology which would have seemed unthinkable at the time of Watson's comments, but also fundamentally redefined what we expect a computer to be able to accomplish.
Patent law has extended what is patentable in the past. At one time patenting chemicals was difficult or impossible in some countries, and reliance had to be made on patenting methods of manufacture. Now it is normal to patent (new) chemicals where they have industrial application.
The other major point made in the summary is that it shows the suitability of the EPO's established problem-and-solution approach for assessing patentability (specifically, it is a method of assessing inventive step, one of the essential prerequisites of patentability) and argues that this provides a reasonable way to assess such inventions.
What is clear from the case law and the requirements of the European Patent Convention and Implementing Regulations is that to secure grant, two conditions must be met: the product or process to be protected must be defined in the claim by means of its technical features, and there must be a technical effect.
The essence of the case before the Enlarged Board of Appeal is whether that technical effect needs to be the direct consequence of the claimed invention, or can be "downstream".
The comments from the President of the EPO unequivocally state that "a computer-implemented simulation of a technical system or process claimed as such solves a technical problem by producing a technical effect going beyond the computer-implementation when it reflects, at least in part, technical principles underlying the simulated system or process", and that "a direct link to physical reality" is not necessarily required for the finding of a technical effect going beyond the computer-implementation.
We have been struck, once again, by the importance of good drafting and good representation. A skilled representative before the EPO can often find some kernel of inventive subject matter to build their case around – but this hinges on the subject matter being available in the patent for them to find in the first place. Identification of the technical features and the technical effect required for patentability before the EPO is for the analytical skill of the patent attorney in discussion with the inventor. Because of the manner in which computer programs may be sold and used, it is particularly important to have a clear understanding of the nature of the modern European claiming system when drafting a European specification and claims in this field.
The involvement of a European patent attorney in drafting of patent applications – even if the first filing is intended to take place elsewhere – can help ensure that by the time the EPO sees an application it's been framed in a manner consistent with the ever-evolving case law and practice of the EPO.
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