Zusammenfassung von EPC2000 Art 056 für die Entscheidung T1768/20 vom 03.07.2023

In T 1768/20 the application related to generating a design model for a chip design by means of a design tool and simulation. The board stated that decision G 1/19 was now the essential case law that had to be considered when assessing inventive step in the current case. According to point 97 of G 1/19, "calculated technical effects should be distinguished from potential technical effects which, for example when a computer program or a control signal for an image display device is put to its intended use, necessarily become real technical effects". The Enlarged Board of Appeal saw no difference regarding the technicality of a simulated physical system in the event that the computer-implemented simulation was claimed as part of a design process, in particular for verifying a design. The board considered that, in the current case, the result of the calculations effected by the method steps of claim 1 was a design model with an "improved" characterisation that is obtained by simulation of a standard cell which was provided in a library file. Such a library file was used by customers in later stages of the overall design process, but the method of claim 1 did not contain steps specifying the use of the produced library file in later design or manufacturing steps. A use of the design model in a manufacturing step would have been particularly relevant since the Enlarged Board considered the inclusion of a manufacturing step to be an argument in favour of patentability. Since the result of the method of claim 1 was calculated data for an improved design that was obtained using simulation, it followed from decision G 1/19 that the improved design did not contribute to inventive step since no "further" technical effect, such as controlling a machine in the foundry during a manufacturing process, was derivable. The board was aware that a "further" technical effect relating to the internal operation of the computer system could also be achieved by the claimed method. However, the only feature of the claimed method that concerned details of its implementation in a computer system was that results were provided in a library file, i.e. that result data were stored in a file, which was well known. Moreover, since the data was as such non-technical, only the storing of the data in a file could be regarded as being technical, but this was also known. Consequently, the steps of the claimed method represented a non-technical algorithm. The appellant had argued that the invention was an "exceptional case" in the sense of decision G 1/19 for which the calculated behaviour of components (standard cells) of a physical system (microchip), exclusively for the purpose of manufacturing the microchip was the basis for a technical contribution. The properties of standard cells calculated during characterisation were specifically and exclusively calculated, provided and used for production purposes. While this was not explicitly stated in the claims, this followed from the context of microchip fabrication and the skilled person's common general knowledge. The appellant also argued that the library file contained data that was used by the machines in the foundry. Regarding the appellant's argument that the claimed invention was an exceptional case according to points 98 and 128 of decision G 1/19, it was important to consider whether the design produced by the method had a potential technical effect in the sense of point 97 of decision G 1/19 (e.g. because the design was produced as a computer program or a television control signal). The exceptional cases mentioned in G 1/19 are to be understood only as cases where the simulation and/or design result, when put to its intended use, without any further human interaction, achieves a technical effect such as controlling a technical device. Such a strict approach is desirable to establish legal certainty by drawing a clear line for the technicality of design processes producing a design. A design consisting merely of geometrical data such as a layout mask could not be said to have a potential technical effect in the sense of decision G 1/19. Since the library file was not directly used to control the machines in the foundry and even further human input was necessary before its use in a manufacturing step, the library file produced by the method of claim 1 could not be considered to have an implied technical effect. Consequently, the board was not convinced that the current case was an "exceptional case" in the sense of decision G 1/19. It therefore followed that the method of claim 1 lacked an inventive step.