T 1371/17 - First application of G 1/19 in a Technical Board of Appeals case

In a preliminary opinion, the Technical Board of Appeals in T 1371/17 made comments, which may be the first-ever application of the principles of G 1/19 by a Technical Board of Appeals.

By adopting the strict view on the technicality of simulation methods, this first application of G 1/19 could be an indication of how the EPO will examine simulation-based inventions in the future.  

G 1/19 - Patentability of computer-implemented simulations

When G 1/19 was issued on 10 March 2021, it was long awaited, because one expected that it clarifies whether the simulation of a technical system is a proper technical task, or whether the features of such simulation methods must be ignored in the assessment of inventive step under the COMVIK approach of T 641/00.

Before G 1/19, it was common practice at the EPO to accept that computer-implemented simulations have technical character, as long as the underlying simulated system was a technical one. This practice was mainly based on T 1227/05 (Circuit simulation I/INFENION), which found that:

"[s]imulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method functionally limited to that purpose" (Headnote 1). 

The Board in T 1227/05 found this rather applicant-friendly approach justified, because simulations are nowadays part of the engineer's toolset and frequently applied in the engineering cycle. The Board stated:

"Simulation performs technical functions typical of modern engineering work. It provides for realistic prediction of the performance of a designed circuit and thereby ideally allows it to be developed so accurately that a prototype's chances of success can be assessed before it is built." (T 1227/05, point 3.2.2 of the reasons)

This applicant-friendly interpretation of the technicality requirement of the EPC was fundamentally put into question by decision T 489/14 (Pedestrian simulation/CONNOR) of 22 February 2019.

T 1798/13 - Weather modeling regarded a "scientific theory", Art. 52 EPC

Art. 52(2)(a) EPC excludes "scientific theories" from the patentable inventions. For example, the physical theory of semiconductivity is not patentable. However, a new semiconductor device based on that theory may be patentable (EPO Guidelines, G-II, 3.2).

 

In T 1798/13 the Board regarded methods of forecasting the weather to be a mere "scientific theory" rather than a technical invention.

 

The appeal in this case is against the decision of the examination division to refuse EP 05796344.9.

Claim 1 of the Main Request reads:

"1. A method for forecasting a value of a weather-based structured financial product for steering of an optimal weather derivative portfolio based on specified weather measures comprising temperature and/or precipitation and/or hours of sunshine and/or heating degree days and/or cooling degree days and/or wind speed retrieved from a weather data measuring and monitoring system comprising: [...]"

According to the Examining Division