It has been a busy year for the Enlarged Board of Appeal. 2019 has seen four referrals from the Boards of Appeal and one decision. The more controversial of this year's referrals (namely Pepper and Computer simulated inventions) have attracted a large number of third party comments. Other referrals (i.e. "Double-patenting") seem to have dropped off the radar of even the EBA. Readers may therefore be forgiven for losing track. Fear not, IPKat is here with your 2019 Enlarged Board of Appeal Year in Review!

Appeal fee refund

Refund of appeal fee (G 1/18)

The outcome of the only referral to the EBA in 2018 was announced in July 2019: Enlarged Board of Appeal opinion on G 1/18, and published a month later: When will the appeal fee be refunded?: G 1/18, the decision. The referral was one of the last actions of outgoing EPO President Batistelli. The President asked for clarity on what should happen when an appeal fee is paid after expiry of the deadline for filing an appeal. Has the appeal been validly filed? Should the appeal fee be refunded?: The intractable question of "inadmissible" or "late filed" appeals - G1/18. In a clear and well-reasoned decision, the EBA sided with the majority of third party commentators, and concluded that the appeal fee should be refunded.

Computer simulated inventions (G 1/19)

The patentability of software (which takes the form of computer "simulated" or "implemented" inventions under the EPO's problem and solution approach) is a controversial topic. In the first of a couple of referrals in February, a Board of Appeal (3.5.07) sought clarity from the EBA on the patentability of computer-implemented simulations (T 0489/14): The patentability of computer simulated methods - another referral to the Enlarged Board of Appeal. The referral was followed by comments from the EPO president: Comments from the EPO President on the patentability of computer-implemented simulations (G 1/19). The President appears broadly in favour of the patentability of computer-simulated inventions. The referral particularly relates to claims having both a technical and non-technical character. The referral asks whether the non-technical features of such an invention and/or the technical purpose of the invention can be considered in the assessment of inventive step.

G 1/19 has received a large number of amicus curiae from third parties. A number of the amicus curiae are from large software companies, who are unsurprisingly in favour of the patentability of this kind of software invention (e.g. Siemens, Philips and IBM). CIPA and EPI have also all given their view, which are in favour of including the technical purpose of a claim in the assessment of inventive step.

Clarity in appeal and is Munich in Haar? (G 2/19)

The second referral in February related to appeals procedure. The referral sought an answer to whether a clarity objection can be discussed in appeal oral proceedings. Clarity can not be raised in opposition (accept in response to a Patentee's post-grant amendment). A clarity objection may be raised in examination by a third party (Article 115 EPC). In the case in question (T 831/17), in order to pursue a clarity objection after grant, a third party filed an appeal against the decision to grant the patent (EP2378735). The appeal was rejected as inadmissible. However, the Board of Appeal referred the question to the EBA of whether the appellant still has the right to oral proceedings even when an appeal is deemed inadmissible.

In response to the referral, the EBA decided that following an inadmissible appeal, a third party is not entitled to oral proceedings in order to discuss the third party's clarity objections. The EBA therefore closed the door on the possibility that clarity may be discussed as a ground of opposition in appeal proceedings: Enlarged Board of Appeal releases full reasoning in G2/19. The opposition period for the granted patent has now expired.

The final question in the referral raised a collective sigh from many in the patent community. The question related to whether Haar could really be said to be situated in Munich: Where is Haar and how did it get there? Observations on Geography while Waiting for G2/19. In particular, did the location of oral proceedings in Haar contravene a party's right to be heard? Rather unsurprisingly, the EBA decided that Haar was in Munich. [Merpel: Whilst relocation of the Boards of Appeal was undoubtedly an unpopular move, was it really necessary to expend EBA time on such a question?]

Pepper (G 3/19)

Of the four referrals to the Enlarged Board of Appeal in 2019, the most controversial was the EPO President's (Antonio Campinos) referral following the Board of Appeals decision on the patentablity of Syngenta's application for a pepper plant. The referral related to the old chestnut of whether products produced by essentially biological processes (i.e. natural processes) are patentable. Some had thought that new Rule 28(2) EPC, which was amended by the Administrative Council to explicitly state that plants produced by natural processes are not patentable, had laid the matter to rest (OJ EPO 2017, A56). However, at the end of last year, the Board of Appeal (3.3.04) in T 1063/18 found that Rule 28(2) EPC was void because it contradicted the interpretation of Article 53(b) EPC in 2015 by the EBA in G 2/12 (Broccoli/Tomato II): BREAKING: TBA decides that Rule 28(2) EPC, excluding plant products produced by essentially biological processes from patentability, is void.

News first came of the referral at the end of March 2019 following an Administrative Council meeting: BREAKING: President to refer the patentability of plants produced by essentially biological processes to the EBA. Part of the controversy surrounding the EPO President's referral, published in April, is that it appears prima facie inadmissible: Pepper gets spicy: The EPO President's Referral to the EBA.

Waiting for the outcome of Pepper

Whilst not wishing to make everything about Brexit, it is possible that Brexit will have an impact on the eventual outcome of the stand-off between the EU/EPO President/AC and the EPO Boards of Appeal. The AC amended Rule 28 EPC to specify that products produced by essentially biological processes are not patentable following a opinion from the European Commission on the Biotech Directive (Directive 98/44/EC): EPO's Administrative Council powerless to amend the EPC: The latest on T 1063/18. The UK has in the past been one of the strong proponents for the patentability of plant products produced essentially by biological processes. However, whilst G 3/19 has attracted 41 amicus curiae from interested parties, including the German, Austrian, Polish and Danish Governments; the Portuguese, Czech Republic and Spanish patent offices; the EU itself and CIPA, there have been no comment from the UK Government. [Merpel: Perhaps they have been too busy?]

It is hoped that 2020 will see the Enlarged Board of Appeal's response to the President's referral. If, as is widely expected, the EBA refuses the referral as inadmissible, all eyes will be on the President's response. If the EBA dismisses the appeal, or agrees with the Board of Appeal in T 1063/18, this will keep the EPO case law at odds with the potential position of the CJEU (should the CJEU follow the EC opinion). In the meantime, proceedings in examination and opposition cases relating to products produced by essential biological processes have been stayed.

Seeing double

Double patenting (G 4/19?)

This referral does not appear to be high on the EBA's priority list. The referral from a Board of Appeal (3.3.01) occurred in February: Breaking: New referral to the Enlarged Board of Appeal on double-patenting. However, details of the referral and its appeal number have not yet appeared on the EBA website. The referral relates the issue of double-patenting, particularly whether an applicant may have legitimate interest in double-patenting in a case of internal priority. In another sign that the referral is not high on the EPO's priority list, the written decision from Board of Appeal has only just been published (T 0318/14).

The EBA therefore has a busy year to come. The questions asked of the EBA this year, in both Computer Simulated Inventions and Pepper are particularly thorny, relating as they do to the fundamental question of what should be patentable. It is hoped that the EBA will provide some clarity on these issues in 2020. However, as we have seen with the Tomato/Broccoli and Pepper saga, it is always worth remembering that an EBA decision is not always the end of the matter.

One of the more early awaiting referrals before the Enlarged Board of Appeal (EBA), is G 1/19, relating to the patentability of computer-simulated methods (IPKat post here). The referral has already attracted a large number of amicus curiae from interested parties, including CIPA, EPI and AIPPI. IPKat will review these observations shortly (once this Kat has had the chance to read them all). In the meantime, the EPO has recently announced that the EPO President himself, António Campinos, has taken the unusual move of submitting his own comments on the referral. 

The President's comments can be read in full here. It appears that the President is broadly in favour of the patentability of computer-implemented simulations (in contrast to his view on the patentability of products produced by essentially biological processes...IPKat post here). In summary, the President argues that the case law of the Boards of Appeal already provides that computer-implemented simulations, claimed as such, may be based on technical considerations. Furthermore, these technical considerations may confer inventiveness on the claim. Computer-simulated inventions may therefore be inventive, and thereby patentable. 


Case Background

Full details of the background to the referral can be found in the previous IPKat post here. In summary, the referral to the EBA was from the Technical Board of Appeal (TBA) in case T 0489/14. The appeal related to the decision by the Examining Division to refuse application EP 03793825, relating to a computer simulated method, on the grounds of lack of inventive step (Article 56 EPC).

Considering the issue of computer implementation

The application in question describes a mathematical model for simulating the movement of individual pedestrians through an environment. The simulation can be used to aid the design of busy environments such as railway stations. The Board of Appeal considered the claimed simulation method to lack technical features, other than the fact that it was implemented on a computer (hence "computer-simulated invention"). Given that computers are known, the method was therefore found to lack inventive step. Furthermore, given that the assessment of inventive step should be based only on the technical features of the claim, the claim was rejected for lacking inventive step over a computer (Article 56 EPC). 

However, the Board of Appeal accepted that their opinion was at odds with other Board of Appeal decisions, namely T 1227/05 and T 1227/05. The Board of Appeal also believed that the question to be determined, namely the interpretation of Article 56 EPC could not, in fact, be answered directly and unambiguously by reference to the EPC. The Board of Appeal therefore referred the question of how the inventive step of computer-simulated inventions should be assessed to the EBA. 

Comments from the President

Taking the President's answer to each of the three referred questions in turn: 

Question 1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?

The first referred question asks whether a claim that relates only to a method that is implemented on a computer can ever be said to solve a technical problem beyond the simple matter of implementing the method on the computer. Question 1 arises in cases of computer-implemented simulations because the claimed invention is only considered to relate to technical subject-matter in so far as the claimed method is implemented on a computer (the computer being the "technical subject matter"). The inclusion of the technical means of a computer shifts the question to one of whether the method implemented on a computer is inventive (Article 56 EPC). 

In proposing his answer to this question, the President first referred to previous Boards of Appeal decision on claims including non-technical and technical features. According to T 641/00 and T 154/04,  non-technical features that do not interact with the technical features of a claim in order to solve a technical problem should be ignored for the purpose of assessing inventive step (T 641/00 and T 154/04). According to the same principle, "non-technical features which do interact with the technical subject-matter of the claim for solving a technical problem must be taken into account" (para. 20).

Applying the problem solution approach, the President considered the closest prior art to the claim as being a general purpose computer. In order to formulate the technical problem to be solved, the President noted that, when a non-technical method is carried out for a technical purpose and thereby involves "technical considerations", these technical considerations can only originate from a person skilled in a technical field"(para. 24). The objective technical problem to be solved in such a case is therefore not simple be “how to implement the non-technical method steps on a computer?”. Such a formulation, the President's view, would involve an ex facto analysis that would only be possible with hindsight knowledge of the technical considerations.

Running a simulation on a computer in order to determine a technical parameter, the President argued, is also not equivalent to a mental act. The simulation is, on the contrary, "an experiment relying on technical principles: replicating on a computer the operation of the technical system or process under certain conditions implied by the model and its parameters". The simulation also relies "on technical considerations pertaining to the technical field relating to the simulated technical system or process" (and not merely to considerations of how to implement the simulation on a computer). Therefore, in the President's view "the provision of the simulation results represents a technical effect going beyond the computer-implementation at least to the extent that it is based on technical principles reflected in the simulation steps" (para. 32).

The President also noted, according to EPO case law, that a "technical effect" does not require the presence of a direct link to physical reality. A technical effect may be found, for example, in the processing of computer-generated image (T 208/84). A model designed by a computer-implemented simulation, the President argued, may also be considered technical e.g. because the model relies on real-world measurements "attributing technical character on the simulation using this model".



Question 2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

The second question asked how one may assess whether a computer-implemented simulation solves a technical problem? Is it sufficient that the simulation is based on technical principles? The President answered this question fairly succinctly, with reference to T 1227/05. According to the President, it is sufficient for a claimed computer-implemented simulation of a technical system or process to solve a technical problem, if the simulation method reflects technical principles underlying the simulated system or process (para. 45). 

Question 3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

The third question was dealt with even more succinctly. The President did not believe the third question required an answer, in view of his answer to the first and second questions. In particular, "if a simulation reflects, at least in part, technical principles underlying the simulated system or process, it solves a technical problem beyond the simulation’s implementation on a computer, irrespective of whether it is claimed as part of a design process".

Will the EBA agree with the President? The EBA is independent of the President and is therefore not obliged to follow his opinion. Furthermore, as mentioned above, there have already been a large number of observations from third parties submitted to the EBA, some in favour and some against the patentability of computer-simulated inventions (Article 10 RPEBA). Individuals with strong views on this issue [Merpel: such as certain hyperbolic bloggers...], are encouraged to submit their own!