Patenting Computer Simulations in Europe Following Enlarged Board Case G1/19 (RECORDING)
This webinar, which is part of our European Practice Webinar Series, will address whether, following the Decision G 1/19 on Computer-implemented simulations, something has changed with respect to the assessment of patentability and inventiveness in Europe. In this long-awaited decision, the Enlarged Board of Appeal (EBOA) of the European Patent Office concluded that computer-implemented simulations should be treated under the long-standing COMVIK approach for Computer-Implemented Inventions (CII) and can be technical.
Our panel, which includes a well-known European Patent Office (EPO) official and experienced attorneys based in Europe, will address the main teachings of the decision with respect to the patenting practice at the EPO. Issues to be discussed will include the implications of the following:
- For the purposes of assessing inventive step under this approach, a simulation can solve a technical problem producing a technical effect further to its implementation on the computer
- The EBOA recognized in accordance with existing case law that features which could contribute to the technical character of a claim could be the use of technical inputs (e.g., measurements) or outputs (e.g., a control signal for controlling a machine), or specific adaptations to the computer or its operation
- On the other hand, the EBOA stated that the simulation being based on underlying technical principles is by itself not sufficient to solve a technical problem
- According to the decision, it is not necessary for there to be a direct link to physical reality, and the same standard applies even if the simulation is claimed as part of a design process
Mike Jennings is lead partner for computer-related inventions and electrical technologies at AA Thornton, a Vice Chairperson of CIPA’s Computer Technology Committee and a member of the quality working group of the Standing Advisory Committee before the EPO (SACEPO). Mike spent half his career as an in-house patent attorney for IBM and half in private practice. At AA Thornton, he handles a substantial computer-implemented inventions workload at the EPO and UKIPO including computer simulation and modelling, quantum computing and artificial intelligence, as well as invention protection and oppositions for various applications of physics and electrical engineering.
Tobias Kaufmann is a German and European patent attorney and a partner of the European IP firm Bardehle Pagenberg. He has more than 10 years of experience in prosecuting and litigating patents the fields of computer science and electrical engineering. In addition to his practical work on AI patent matters, he has also recently worked on amicus curiae letters to the EPO in the pending computer simulation referral case to the Enlarged Board of Appeal G1/19.
Director, Patent Law
European Patent Office (EPO)
Heli Pihlajamaa, Director Patent Law for the European Patent Office (Munich, Germany), is responsible for supporting EPO policy by developing, strengthening and promoting the EPC, including proposals for legal changes, compliance of operations with patent law-related norms and case law. She advises EPO higher management on policy issues and legal amendments. She represented the EPO President in G1/19 in the oral proceedings before he Enlarged Board of Appeal. Before joining the EPO, she worked in both the private and public sectors and taught at the Technical University in Helsinki, Finland. She studied Law at Helsinki University and at Max Planck Institute in Munich.
Leydig, Voit & Mayer, LTD.
James Signor, a partner of Leydig, Voit & Mayer, LTD., is a U.S. Patent Attorney located in Leydig’s Frankfurt, Germany office and primarily focuses his practice on serving European clients in all aspects of U.S. intellectual property law. His practice includes drafting and prosecuting patents in diverse technologies in the mechanical, electrical and computer fields with an emphasis on emerging technologies such as AI and Blockchain. In addition to his patent prosecution practice, he works closely supporting clients in making informed business decisions and in enforcing and commercializing their IP.