You appear to be using an older version of Internet Explorer. We suggest you upgrade your browser for the best viewing experience. Upgrade to a Modern Browser
Technical Board of Appeal 3.5.07 has now applied the opinion given by the Enlarged Board of Appeal in G 1/19 (discussed in our Briefing here) to the pedestrian simulation application where the referral was made. As reported in our roundup of decisions in 2021, the Technical Board decided at oral proceedings in November 2021 to refuse the pedestrian simulation application but the reasoned decisions have only been published in the last few weeks. The applicant made a very thorough effort to obtain some protection for their invention, filing a total of eleven requests covering several different approaches to defining technical subject matter. Consideration of why all of those requests were rejected provides some useful pointers to drafting applications and the presentation of arguments in support of technicality if an objection is raised.
By way of brief recap, Enlarged Board decision G 1/19 essentially confirmed EPO practice since the Comvik decision (T0641/00 of 26 September 2002) under which an invention must be a technical solution to a technical problem in order to be patentable. This leads to the practice that non-technical features in a claim are disregarded unless they can be shown to combine with other technical features to solve a technical problem. G 1/19 did however emphasise that an invention must be technical across the whole scope of the claim so that where the output of a method is data, a technical use of that data must be at least implicit and all non-technical uses excluded.
Turning to the various requests filed by the applicant, their main request was directed to “a computer-implemented method of modelling pedestrian crowd movement in an environment” and included just steps of simulating the movement of pedestrians. The Technical Board noted that the simulation steps are essentially just a mathematical method and neither the inputs nor the calculated outputs have a direct link with physical reality. Many non-technical uses of the outputs are covered, for example pure curiosity. Applying G 1/19, the Technical Board noted that it is not sufficient that the simulation is based on technical principles underlying the simulated system and could find no other technical features in the claim, hence rejected it.
The first auxiliary request changed the term “environment” to “building structure”. The second and fifth auxiliary requests added more detail on the non-technical simulation steps. None of these changes addressed the lack of technical subject matter in the main request. Giving more details of the simulation steps could perhaps have helped if they could have been shown to be tied to specific computing hardware on which the simulation was to be performed. However, the application as originally filed contained no hint that the simulation method was particularly adapted to specific computer hardware.
The third auxiliary request related to how the results of the non-technical simulation are displayed and so was further rejected as a non-technical presentation of information.
The fourth auxiliary request claimed the simulation method as part of a design process and included a step of revising a design model in dependence on the simulated movement of pedestrians. G 1/19 held that a design process was normally a cognitive activity so there is no special rule that would bring a design method back into patentability. The Technical Board noted that the revising step of the design could be performed by a human designer and neither the claim nor the application gave any direct link between the simulation results and how a design should be revised. The revised design had non-technical uses, e.g. in a video game. Thus, the fourth auxiliary request was also rejected.
The main and first to fifth auxiliary requests were all filed prior to the referral of questions to the Enlarged Board. After issuance of the Enlarged Board decision, new requests, referred to as the seventh to eleventh auxiliary requests, were filed. There appears to have been no sixth auxiliary request.
Noting that the referral of questions to the Enlarged Board is a rare enough circumstance to allow an exception to the rule that a party must include its complete case in the statement of grounds, the Technical Board admitted the seventh and eighth requests to the proceedings. These requests sought to specify that the invention used measured data as input data, relying on the Enlarged Board’s observation that technical subject matter could arise by the use of a technical input such as a measurement to a computer-implemented process. However, even putting the most favourable possible interpretation on claim limitations introduced in the seventh and eighth requests, the Technical Board considered that the new features of measuring pedestrian activity to determine pedestrian profiles to be used in the simulation was not directly enough linked to the rest of the simulation to truly result in the method providing a measurement of a physical entity.
The ninth auxiliary request was a further attempt to link to an actual measurement, specifically timers that measured waiting times. However, the Technical Board considered that the claim was not clear and there did not seem to be much basis for a clear limitation, so the request was not admitted into the proceedings.
Finally, the tenth and eleventh auxiliary requests presented the most radical attempt to define technical subject matter by limiting the invention to a method of controlling movement of an “autonomous entity” or a “robot”. Although these limitations seemed most promising from the point of view of showing technical subject matter, the Board considered that these requests presented a completely new case that had not been prosecuted in the first instance proceedings and therefore these requests were not admitted into the proceedings.
Lessons that can be drawn from this application for drafting patent applications include:
The key lesson for addressing objections is that all amendments and arguments need to be presented in the first instance proceedings if at all possible and certainly no later than the statement of grounds of appeal. It is however worth noting that the claims not admitted by the Technical Board could have been pursued by way of a divisional application. A divisional is still pending so perhaps there will be a sequel. Given delays in the Boards of Appeal, a divisional application might also be a quicker route to protection. It is interesting to note that two patents in the family have been granted in the US with claims to the broad method of modelling suggesting this is an area where the EPO may be a harder jurisdiction.
For more information contact John Leeming or your usual J A Kemp adviser.