How to Register a Trademark in the EU: a 5 Step Guide and Other Practical Concerns in 2020

By Moeller IP Team.

Filing for an EU Trademark is a wise decision if you want to protect your brand across the European Union. It is a valuable tool for ensuring that no one copies your products and hard-earned brand image. In this article, you will find out what the requirements are to get an EU Trademark, the scope of protection, the application process, as well as other relevant practical aspects to take into account throughout the process.

If you need help or advice to register your trademark, our specialized trademark lawyer will be delighted to help you. 

What is an EU Trademark and am I able to get one?

A registered trademark grants you exclusive rights over “distinctive signs”, which include the following concepts:

• Logos
• Names
• Images
• Colours
• Patterns
• Shapes
• Packaging of goods
• Sounds
• Smells (with specific requirements which shall not be explored here. Find out more

Scope and duration of IP protection

An EU Trademark will protect your brand across all EU countries for 10 years before it must be renewed. Information relevant to renewal can be found below in the section titled “IP Monitoring and TM Renewal”.

How can I apply for an EU Trademark?

Now that we have covered the definition of a registered trademark in the EU and its scope, we shall now cover the application process, which must be conducted through the EUIPO (European Union Intellectual Property Office).

The application process can be split up into 5 steps:

1. Trademark Search
2. File the EUIPO Trademark Application
3. Examination Period
4. Publication
5. Trademark Issuance

For the purpose of giving an example, we shall go through the TM application procedure under the presumption that you want to register a logo as a trademark in the EU.

Step 1: Trademark Search

Before filing your application, it is wise to first check if your logo is not already registered. This search can be done free of charge through eSearch plus and TMview. In these portals, you can search both with text and by dragging and dropping an image of your logo into the search bar. For official EUIPO information regarding trademark search criteria, click here.

Once you have found that your logo is distinguishable from those already registered, you can proceed to start the EUIPO application process.

Step 2: File the EUIPO Trademark Application

The easiest way to start the application process is online through the official EUIPO website. Here, you will find two options.

1. Fast Track

The Fast Track option is the most efficient way of protecting your brand as quickly as possible. On average, these applications are processed 50% faster and take just 3 weeks to be published. This would be recommended for most trademarks and requires that payment be made at the very beginning – the examination period cannot begin until the payment (850€) has been received.

The Fast Track option is a simple 5 step process that the website takes you through. An informative explanation of the 5 steps can be found here. An important aspect to consider is the input of the goods and services you will provide under this trademark. If you are providing goods and services in various industries or sectors, and therefore need to include several classifications, you will have a higher risk of a problematic application. Fortunately, the EUIPO have created a Goods & Services builder to help you, which can be found here.

2. Advanced Form

The Advanced Form should only be used for more complex applications involving a customized goods and services submission, a collective mark, an international trademark transformation, or use more than one language in your application.

Step 3: Examination Period

Once filed, an EUIPO examiner will review your trademark application and within one month will inform you if there have been any issues. This could be an innocent mistake in the form, which is easily fixed, or a concern regarding the distinctiveness of the logo, for example.

Most issues that arise are often innocent mistakes. In this case, you have two months to correct any problems and move forward with the trademark application procedure.

Step 4: Publication

Once provisionally approved, your trademark will be published in the EU Trademark Bulletin. This will be published for three months, during which time third parties may review your mark and, if they believe that it is too similar or is a copy of their trademark, they can file a notice of opposition. In this case, your application could be delayed for more than 2 years given the length of the opposition procedure. [If your application has been opposed by another party, learn how to overcome this here.]

Step 5: Trademark Issuance

If no third parties have filed oppositions and your application is in order, congratulations! Your trademark will be approved by the EUIPO and within 6 months of publication, you will receive a registration certificate. This is a document that proves your exclusive legal right to use your trademark throughout the European Union. But it isn’t over yet…

Follow-up: IP Monitoring and TM Renewal

IP Monitoring

Just because you have the IP rights protecting your brand with your shiny new trademark, that doesn’t mean that your brand is free from risk. It is now up to you to ensure that nobody else tries to use your brand for their own commercial gain.

In order to facilitate the monitoring and continued protection of your IP, we have partnered with [insert partner’s name here with a link] to ensure that you don’t have to worry about this part of the process.

TM Renewal

Don’t forget that your trademark is only protected through EUIPO for 10 years. At the end of this period, you must file for a renewal. It would be wise to carefully manage this or hire an IP lawyer to take charge since the EUIPO will not remind you when your protection is ending.

Final words about International Trademark

We hope that you now feel much more comfortable with regard to your trademark application. However, if you are wanting to protect your IP in more countries than just the EU, there is another procedure to register an International Trademark through the WIPO (World Intellectual Property Organization) that allows you to protect your brand across the world. You can learn “How to register and international trade mark in 3 steps“. If you have any doubts, please don’t hesitate to get in touch with one of our experienced IP specialists.

European Patent Office Issued Opinion G 3/19 (Pepper) on 14.05.20

By José Santacroce. Partner and Head of Patent Department.

The Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) on 14.05.20 and concluded that plants and animals exclusively obtained by essentially biological processes are not patentable.

The key concepts of opinion G 3/19

The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.

Background

The Enlarged Board of Appeal is the highest judicial authority under the EPC, which provides for an autonomous legal system that is separate from the European Union. The Enlarged Board’s main task is to ensure the uniform application of the EPC.

Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

Rule 28(2) EPC was introduced by the decision of the Administrative Council of the European Patent Organisation and came into force on 1 July 2017.

In 2015, the Enlarged Board had concluded in its decisions G 2/12 and G 2/13 within the then applicable legal framework, i.e. before the introduction of Rule 28(2) EPC, that the non‑patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC did not extend to products that are exclusively obtained by means of an essentially biological process.

In 2018, a Technical Board of Appeal held in decision T 1063/18 that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC, and followed the Enlarged Board’s earlier decisions G 2/12 and G 2/13.

In 2019, the President of the European Patent Office referred a point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC concerning the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 and G 2/13, and in particular in view of new Rule 28(2) EPC.

Key considerations

In its opinion issued today, the Enlarged Board of Appeal held the referral by the President of the European Patent Office to be admissible within the terms of a re‑phrased question. On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.

Taking account of the Administrative Council’s decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.

In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date.

Source: www.epo.org

The European Patent Office – Patent Index 2019

By José Santacroce. Partner and Head of Patent Department

Patent Index 2019

The European Patent Office (EPO) just published its Patent Index 2019, below a summary of the key statistics.

The EPO received last year a record 181 000 patent applications, 4% more than in 2018.

In total, nearly half of all patent applications came from companies based in Europe, with Germany alone accounting for some 15%. From the other regions, US firms dominated with a quarter of all applications, followed by companies from Japan, China and South Korea.

Origin of patent applications in 2019

In terms of growth, patent applications filed by European companies increased modestly. There was a strong rise in demand from the US. The steepest growth rates were posted by Asian companies, in particular Chinese and South Korean firms.

Top 10 applicants at the EPO in 2019

• 1.HUAWEI 3 524

• 2.SAMSUNG 2 858

• 3.LG 2 817

• 4.UNITED TECHNOLOGIES 2 813

• 5.SIEMENS 2 619

• 6.QUALCOMM 1 668

• 7.ERICSSON 1 616

• 8.ROYAL PHILIPS 1 542

• 9.SONY 1 512

• 10.ROBERT BOSCH 1 498

Top 10 countries for patent applications at the EPO in 2019

Among European countries with large volumes, the greatest increases in filings came from Sweden, the UK, and Switzerland. Filings from Germany remained stable and Italy saw moderate growth, while France and the Netherlands saw decreases.

Looking at countries with mid-range patenting volumes, Spain saw the biggest rise in applications. There were also increases in filings from Belgium and Austria.

Further significant growth was seen from companies in Portugal, Ireland, and Norway, albeit from small overall patenting volumes.

The patent applications filed with the EPO in 2019 also indicate Europe’s position as a key market for the next wave of digital transformation technologies.

Technical fields with most patent applications in 2019

Digital communication: The new top technology field at the EPO

Digital communication was the new top technology field at the EPO, reflecting the rapid development of 5G technologies.

China, the US, and Europe were the most active regions of origin. They each account for roughly a quarter of the patent applications in this field.

Computer technology: The second fastest-growing field

It was fuelled by the growing importance of Artificial Intelligence. Patent applications concerned especially machine learning, data retrieval, image data processing, and pattern recognition. Overall, US companies led this field, with European applicants not far behind.

The dominant position of digital technologies was clearly reflected in the list of leading applicants. Huawei topped the table, followed by Samsung, LG, United Technologies and Siemens.

Overall, European companies retained the largest share in seven of the ten most active technology fields. These include transport, where Europe continued to excel in the automotive sector. The same was also true for clean energy technologies.

Source: www.epo.org

The European Patent Office (EPO) Publishes Grounds for its Decision to Refuse Two Patent Applications Naming a Machine as Inventor

By José Santacroce. Partner and Head of Patent Department.

EPO – Applications refused

The EPO has published on 27 January 2020 its decision setting out the reasons for its recent refusal of two European patent applications in which an Artificial Intelligence (AI) system was designated as the inventor.

Filed by an individual in autumn 2018, the applications EP 18 275 163 and EP 18 275 174 were refused by the EPO following oral proceedings with the applicant in November 2019, on the grounds that they do not meet the legal requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, and not a machine.

The machine called “DABUS”

In both applications, the machine called “DABUS”, which is described as “a type of connectionist artificial intelligence”, is named as the inventor. The applicant stated that he had acquired the right to the European patent from the inventor by being its successor in title, arguing that as the machine’s owner, he was assigned any intellectual property rights created by this machine.

In its decisions, the EPO considered that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person. The Office further noted that the understanding of the term inventor as referring to a natural person appears to be an internationally applicable standard and that various national courts have issued decisions to this effect.

Moreover, the designation of an inventor is mandatory as it bears a series of legal consequences, notably to ensure that the designated inventor is the legitimate one and that he or she can benefit from rights linked to this status. To exercise these rights, the inventor must have a legal personality that AI systems or machines do not enjoy.

Finally, giving a name to a machine is not sufficient to satisfy the requirements of the EPC mentioned above.

The decisions to refuse the two patent applications can be appealed by the applicant within two months at the EPO’s independent judiciary, the Boards of Appeal.

Source: www.epo.org

The European Patent Office (EPO) Officially revoke the Broad Institute´s CRISPR patent

By José Santacroce. Partner and Head of Patent Department.

European patent EP 2771468

European patent EP 2771468 relates to the CRISPR/Cas9 gene-editing technology held by the Broad Institute of Harvard and MIT, Massachusetts.

The EPO opposition division had revoked the patent for lack of novelty in view of intermediate prior art. This prior art became relevant because the opposition division did not acknowledge the patentee’s claim to priority from a US provisional application naming more applicants than the subsequent PCT application from which EP 2771468 is derived. Since the omitted applicant had not transferred his rights to the applicants of the PCT application the priority claim was considered invalid.

On 16 January 2020, the EPO Board of Appeal in case T 844/18 dismissed the patent proprietor’s appeal against the decision of the opposition division and thus confirmed the revocation of the patent. The board did not refer questions to the Enlarged Board of Appeal.

Reasons for revocation

The reasons for the board’s decision will be issued in writing in due course.

In 2012, Professor Jennifer Doudna of the University of California, Berkeley and Professor Emmanuelle Charpentier were the first to file a patent for the discovery of CRISPR/Cas9. Subsequently, Professor Feng Zhang at the Broad Institute was granted a fast-tracked patent based on the use of CRISPR to edit the genomes of eukaryotic cells. Since then, both institutions have competed for numerous patents with overlapping rights across multiple jurisdictions.

The Broad’s EPO patent was originally granted based on evidence of their original US patent filings. However the Broad’s earliest US applications, filed in 2012, listed Professor Luciano Marraffini of Rockefeller University, New York, as one of the inventors, but subsequent Broad applications, in the US and Europe do not include him. Because the list of inventors is not the same, the EPO declared the early US filings are not valid evidence that their claim dates back to 2012, and as such cannot be used to show the Broad’s claim predates that of competitors, including UC Berkeley.

The Broad has said that nine of their 21 CRISPR/Cas9 patents in Europe could be affected by the ruling which “does not involve the actual scientific merits of the patent application, but the interpretation of rules that dictate what happens when the names of inventors differ across international applications.”.

Source: epo.org

EPO and Cambodia Renew Bilateral Cooperation

By José Santacroce. Partner and Head of Patent Department.

A delegation from Cambodia visits the EPO

Source: www.epo.org

EPO and Chinese IP Office Enhance their Comprehensive Strategic Partnership

By José Santacroce. Partner and Head of Patent Department.

Patent Cooperation Treaty (PCT)

At their annual meeting in Suzhou on 12 November 2019, EPO President António Campinos and the Commissioner of the China National Intellectual Property Administration (CNIPA), Shen Changyu, agreed to enhance their bilateral co-operation in the framework of the Patent Cooperation Treaty (PCT). The aim is to give patent applicants filing an international patent application in English at the CNIPA as Receiving Office the choice to opt for the EPO as their International Searching Authority (ISA).

It is expected that this new option will be offered in the course of next year, and be implemented as a two-year pilot programme.

EPO AND CNPIA

CNIPA Commissioner Dr. Shen Changyu said: “The EPO and CNIPA are comprehensive strategic partners. For more than 30 years, the two offices have maintained a long-term close co-operative relationship. The fruitful cooperation results greatly benefited users and the public both in Europe and China. The two offices reached consensus on the designation of EPO as an ISA of the PCT international patent application in English filed at the CNIPA as Receiving Office. It will further benefit PCT applicants in China and even around the world. It is also a solid step for China to further enhance its international co-operation on IP protection”.

“This is a significant step forward in our strategic co-operation with China in the area of patents,” said EPO President Campinos. “The EPO is truly honoured by this sign of trust put in its PCT products, and we are committed to delivering the best possible services to patent applicants from China and around the world. This development reflects the longstanding and close bilateral relations with CNIPA, a co-operation which benefits not only our offices, but also companies and inventors seeking to protect their inventions in international markets.”

For Chinese applicants, this step will offer an additional option to optimise their international patent strategy, especially when considering protection in Europe. As a result, Chinese users interested in accelerating the prosecution of their applications will, by selecting the EPO as their ISA, gain up to one year by entering into the European phase earlier and getting direct examination of their files, without the need for a European supplementary search.

EPO-CNIPA co-operation, comparative study on computer-implemented inventions

Bilateral co-operation between the EPO and CNIPA dates back more than 30 years to the signing of a first memorandum of understanding between the two patent offices in 1985. In 2017 the EPO and Chinese office elevated their co-operation to a comprehensive strategic partnership, the first such agreement between two major patent offices.

In recent years, technology related to computer-Implemented inventions (CII) has evolved rapidly, and CII-related patent applications have increased significantly. National IP offices and patent applicants around the world face new challenges as these technologies play a larger role in other areas of innovation. In response to these challenges, CNIPA and the EPO worked together to produce a joint study outlining the similarities and differences of examination practices specific to software-related inventions. The heads of the EPO and CNIPA launched this joint report at a public IP event in Nanjing on Monday. The findings are expected to provide practical guidance to applicants about what to expect when filing CII applications at the two offices.

CNIPA received more than 1.5 million applications for invention patents in 2018. China is now the fifth most active country of origin for European patent applications, with strong growth from Chinese applicants at the EPO in recent years (+8.8% in 2018).

Source: www.epo.org

EPO and INPI Argentina sign first Reinforced Partnership Agreement

By José Santacroce, Partner and Head of Patent Department

EPO and INPI Argentina sign a Memorandum of Understanding (MoU)

The European Patent Office and the National Institute of Industrial Property (INPI) of Argentina are stepping up their cooperation. EPO President Antonio Campino and INPI President Damaso Pardo signed on 2 July 2019 a Memorandum of Understanding (MoU). The purpose is establish a Reinforced Partnership programme between both offices. This comprehensive cooperation agreement is the first of its kind to be set up by the EPO with an IP office in Latin America. The meeting of the Heads of Office took place on the margins of the IP Executive Week in Alicante.

According to Antonio Campinos, thanks to this agreement, the EPO can work more closely with one of the largest economies in Latin America. In addition, the EPO can also strengthen its relations with this dynamic region. Building on EPO long-standing ties with INPI, the agreement will help better meet the needs of companies in Argentina and users around the globe.

According to Damaso Pardo, this agreement aims to render the respective patent systems as efficient, user-friendly and reliable as possible for innovators; a robust patent system is an essential instrument for stimulating innovation, entrepreneurship and economic development.

Reinforced Partnership programme objectives

Through their Reinforced Partnership programme, the EPO and INPI will work together to achieve shared objectives such as ensuring that the patent systems in both regions offer the best possible services to innovating businesses and inventors in an effective manner in order to benefit the economy and society as a whole.

The Offices will also focus on a number of activities aimed at strengthening capacities in search and examination in emerging technologies fields such as the Internet of Things  (IoT) and Industry 4.0, as well as capitalising on EPO work products, tools and standards.

The EPO and INPI have a long-standing history of cooperation. A previous MoU on technical cooperation was signed in Buenos Aires in May 2017, which will be replaced by the most recent MoU on Reinforced Partnership.

Source: www.epo.org

European Patent Office Annual Report 2018

By José Santacroce, Partner & Head of Patent Department

The European Patent Office (EPO) recently published its Annual Report 2018.

The main statistics and trends are highlighted below.

European patent applications continued to grow in 2018, reaching 174 317 applications, that is +4.6% with respect to last year.

Large enterprises filed 71% of the last year´s patent applications, SMEs, individual inventors: 20% and universities and public research organizations: 9%.

127 625 patents were granted last year (+20.8% with respect to 2017), 45% of them were granted to EPO member states, US: 24%, Japan: 17%, Korea: 5% and China: 4%.

The opposition rate in 2018 was 3.2%; the decisions in opposition cases were as follows: patent revoked: 27%, patent maintained in amended form: 42% and patent maintained as granted: 31%.

The top 10 countries with the most European patent applications in 2018 were the following:

• US 43 612 (25%)
• Germany 26 734 (15%)
• Japan 22 615 (13%)
• France 10 317 (6%)
• China 9 401 (5%)
• Switzerland 7 927 (5%)
• Korea 7 296 (4%)
• Netherlands 7 140 (4%)
• Great Britain 5 736 (3%)
• Italy 4 399 (3%)

The top 20 applicants in 2018 were the following:

• Siemens 2493
• Huawei 2485
• Samsung 2449
• LG 2376
• United Technologies 1983
• Philips 1617
• Qualcomm 1593
• Ericsson 1472
• General Electric 1307
• Bosch 1286
• Sony 1278
• BASF 1256
• Intel 1057
• Johnson & Johnson 982
• Microsoft 975
• Canon 816
• Panasonic 815
• Valeo 784
• Alphabet 779
• Nokia739

The top 10 fields of technology in 2018 were the following:

• Medical technology 13 795
• Digital communication 11 940
• Computer technology 11 718
• Electrical machinery, apparatus, energy 10 722
• Transport 9 039
• Measurement 8 744
• Pharmaceuticals 7 441
• Biotechnology 6 742
• Other special machines 6 379
• Organic chemistry 6 233

 Source: http://www.epo.org​

New Referral to EPO’s Enlarged Board of Appeal to Decide on the Patentability of Computer Simulations​

By José Santacroce, Partner and Head of Patent Department

On 28 February 2019, in its decision T0489/14 (Title of the invention: Simulation of the movement of an autonomous entity through an environment, Applicant: Connor, James Douglas) the EPO’s Technical Board of Appeal (TBA) 3.5.07 (Chairman: R. Moufang) referred three questions relating to computer simulations to the EPO’s Enlarged Board of Appeal (EBA).

The case concerns a simulation run on a computer, and the questions relate to the extent to which such a simulation can be considered to be based on technical principles.

The following questions were referred to the Enlarged Board of Appeal for decision:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?
2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

The invention disclosed in European patent application No. 03793825.5 (IPC: G06F17/50) relates to a computer-implemented method, computer program and apparatus for simulating the movement of a pedestrian crowd through an environment.

The main purpose of the simulation is its use in a process for designing a venue such as a railway station or a stadium. The application is based on the insight that human interaction can be expressed and simulated in the same way as interactions of physical objects.

Claim 1 of the patent application according to the main request of the applicant reads as follows:

“A computer-implemented method of modelling pedestrian crowd movement in an environment, the method comprising:

simulating movement of a plurality of pedestrians through the environment, wherein simulating movement of each pedestrian comprises:

providing a provisional path (9) through a model of the environment from a current location (6) to an intended destination (7);

providing a profile for said pedestrian;

determining a preferred step (112′), to a preferred position (123′), towards said intended destination based upon said profile and said provisional path, wherein determining said preferred step comprises determining a dissatisfaction function expressing a cost of taking a step comprising a sum of an inconvenience function expressing a cost of deviating from a given direction and a frustration function expressing a cost of deviating from a given speed;

defining a neighbourhood (29) around said preferred position (123′);

identifying obstructions in said neighbourhood, said obstructions including other pedestrians (21) and fixed obstacles (25);

determining a personal space (24) around said pedestrian;

determining whether said preferred step (112′) is feasible by considering whether obstructions (21, 25) infringe said personal space over the course of the preferred step (112′).”

The Technical Board of Appeal 3.5.07 is of the view that the claimed invention lacks inventive step over a general purpose computer on the following grounds (section 11 of the decision):

“In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity. Such a link is not present where, for example, the parabolic trajectory followed by a hypothetical object under the influence of gravity is calculated. Nor can the Board detect such a direct link in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment, which is what is claimed here. In fact, the environment being modelled may not exist and may never exist. And the simulation could be run to support purely theoretical scientific investigations, or it could be used to simulate the movement of pedestrians through the virtual world of a video game.”

In the proceedings before the TBA, the applicant has cited the earlier decision T1227/05 (Circuit Simulation/Infineon Technologies”), relating to a computer-implemented method for the numerical simulation of an electronic circuit. T1227/05 states: “An electronic circuit having input channels, noise input channels and output channels, the behavior of which is described by a system of differential equations is a sufficiently determined class of technical subjects, the simulation of which can be a functional technical feature.”

In other words, if the system or method to be simulated is sufficiently technical, then the simulation method itself is also a technical method and for the assessment of inventive step has to be compared with prior art simulation methods, not with the functioning of a general purpose computer.

The TBA consequently held that if the board were “to follow decision T1227/05, it would have to acknowledge that some or all of the steps of the simulation method of claim 1 contribute to a technical effect of the invention and could thus not be ignored when assessing inventive step” and that it “would hence be necessary to compare the invention with prior art other than a general-purpose computer.”

The TBA, however, still found that it “would tend to consider the subject matter of claim 1 of the main request to lack inventive step over a general-purpose computer” since the claimed method would “assist the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behavior of the virtual circuit or environment designed.” And, “the cognitive process of theoretically verifying its design appears to be fundamentally non- technical.”

The TBA therefore referred the case to the EBA for reconciling its own view (citing a number of other earlier decisions as support) with the inconsistent view of T1227/05.

The alleged inconsistency in the law that is the basis for the present referral relates to the fact that in decision T1227/05, the Technical Board of Appeal considered that the disclosed simulation method was part of a fabrication process (making an electrical circuit), and as such the invention could not “be denied a technical effect merely on the ground that it does not yet incorporate the physical end product”. In the present case TBA 3.5.07 agrees that this earlier case is analogous, but raises concerns that the earlier case is effectively not reliable given the general legal background. Unlike electrical circuits simulations, which are based entirely on the laws of physics, simulation of a pedestrian crowd movement is only partly based on such laws, even if it may be simulated numerically. This referral seeks therefore clarity on whether the earlier case should be followed.

The outcome of the referral has implications far beyond computer simulations, but to Computer-Implemented Inventions in general, for example also to inventions related to Artificial Intelligence (AI) or Machine Learning (ML) to model systems and processes without necessarily controlling or interacting with physical means.

Source: www.epo.org