T 803/17 - Planning a surgery using a statistical shape model - Is providing a computer model a technical task?

Decision T 803/17 from Board 3.2.02 is remarkable, in my opinion, not so much for what it considered important for the assessment of inventive step, but more for what the decision did not consider important.

The invention in this case relates to a computer implemented method of planning at least a part of a surgical procedure to be carried out on a body part of a patient. The method provides a "statistical shape model" of a body part and then "instantiat[es] the statistical shape model of the body part using data derived from the patient's real body part". When the method instantiates the statistical shape model, it "adapts the part of the planned surgical procedure to reflect the anatomy of the patient's real body part to automatically plan the part of the planned surgical procedure."

Claim 1 reads as follows:

"1. A computer implemented method (110) of planning at least a part of a surgical procedure to be carried out on a body part of a patient, comprising:
providing (112) a statistical shape model of the body part; and
instantiating (116) the statistical shape model of the body part using data derived from the patient's real body part, characterised in that, the statistical shape model incorporates data representing at least a part of a planned surgical procedure to be carried out on a corresponding real body part of the patient and wherein instantiating the statistical shape model of the body part also adapts the part of the planned surgical procedure to reflect the anatomy of the patient's real body part to automatically plan (118) the part of the planned surgical procedure."

While the official catchwords of the decision deal with the concept of reformatio in pejus in the case of an inadmissible opposition (if you are interested in this, please read here), I find more remarkable the manner in which the Board dealt with the question of inventive step, namely, the manner in which they dealt with "model"-related features and the question of whether such computer models have technical character.

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.