6.5.6 Establishing technical character
In T 1173/97 (OJ 1999, 609) and T 935/97 the board found that a computer program must be considered to be patentable when it has technical character. For the purpose of interpreting the exclusion from patentability of programs for computers under Art. 52(2) and (3) EPC 1973, the board assumed that programs for computers could not be considered as having a technical character for the very reason that they are programs for computers. This means that physical modifications of the hardware (causing, for instance, electrical currents) deriving from the execution of the instructions given by programs for computers cannot per se constitute the technical character required for avoiding the exclusion of those programs. Although such modifications may be considered to be technical, they are a common feature of all those programs for computers which have been made suitable for being run on a computer, and therefore cannot be used to distinguish programs for computers with a technical character from programs for computers as such. It was thus necessary to look elsewhere for technical character in the above sense: It could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. The board stated that every computer program product produced an effect when the program concerned was made to run on a computer. The effect only showed in physical reality when the program was being run. Thus the computer program product itself did not directly disclose the said effect in physical reality. It only disclosed the effect when being run and consequently only possessed the "potential" to produce said effect. This effect might also be technical in the sense explained in reason 6 of the decision, in which case it constituted the "further technical effect" mentioned there. This meant that a computer program product might possess the potential to produce a "further" technical effect.
The board concluded that on condition they were able to produce a technical effect in the above sense, computer programs had to be considered as inventions within the meaning of Art. 52(1) EPC 1973, and might be the subject-matter of a patent if the other requirements provided for by the EPC were satisfied.
G 1/19 concerned the computer-implemented simulation of the movement of a pedestrian crowd through an environment such as a building. The questions of law referred to the Enlarged Board were answered as follows:
1. A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation's implementation on a computer.
2. For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
3. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.
The Enlarged Board agreed with the findings of T 1227/05 and T 625/11 if they were understood as being that the claimed simulation processes in those particular cases possessed an intrinsically technical function. It also did not see a need to require a direct link with (external) physical reality in every case. However, it held that there were rather strict limits for the consideration of potential or merely calculated technical effects according to the COMVIK approach (T 641/00). Like any other computer-implemented inventions, numerical simulations may be patentable if an inventive step can be based on features contributing to the technical character of the claimed simulation method. In T 761/20 the board held that though G 1/19 was related to computer-implemented simulations, its reasons apply to computer-implemented methods other than simulations as well.
In the opinion of the Enlarged Board in G 1/19, when the COMVIK approach is applied to simulations, the underlying models form boundaries, which may be technical or non-technical. In terms of the simulation itself, these boundaries were not technical. However, they may contribute to technicality if, for example, they were a reason for adapting the computer or its functioning, or if they formed the basis for a further technical use of the outcomes of the simulation (e.g. a use having an impact on physical reality). In order to avoid patent protection being granted to non-patentable subject-matter, such further use had to be at least implicitly specified in the claim. The same applied to any adaptations of the computer or its functioning.