Enlarged Board of Appeal's G 1/19 Hearing Signals Potential Shift in AI Patentability Standards

The Enlarged Board of Appeal of the European Patent Office (EPO) recently conducted a high-profile hearing on case G 1/19, drawing approximately 1,600 viewers worldwide via live stream. This case, which concerns the patentability of computer simulations, has significant implications for the future of artificial intelligence (AI) patents, given the close relationship between AI and computer-simulated inventions grounded in abstract mathematical theories.

The patent application at the center of G 1/19, EP 15 46 948, titled “Simulation of the movement of an autonomous entity through an environment,” was originally filed nearly two decades ago. The Enlarged Board was tasked with clarifying whether computer-simulated inventions require a direct link to physical reality or if demonstrating a technical effect and purpose suffices under the European Patent Convention (EPC).

This referral originated from the EPO’s Technical Board of Appeal due to conflicting interpretations in prior case law, notably the Infineon Technologies decision (T 1227/05). The Enlarged Board’s ruling is expected to resolve discrepancies and establish clearer guidelines for patenting computer simulations and, by extension, AI-related inventions.

Pawel Piotrowicz, the patent attorney representing the referral in G 1/19, advocates for upholding the Infineon approach, which supports a less restrictive patentability standard for software inventions. Piotrowicz argues that such a stance would foster innovation not only in communication technologies but also across sectors like pharmaceuticals, where computer simulations play a critical role in developing new applications.

“The outcome of the G 1/19 case will impact the patentability assessment of simulations and other computer-implemented inventions, including machine learning and artificial intelligence,” Piotrowicz stated. He further emphasized that the decision could determine whether software tools used in designing products ranging from bicycles to airplanes and computer chips qualify for patent protection.

Andreas Holzwarth-Rochford, partner and patent attorney at Jones Day, concurs that the EPO is poised to adapt its case law to the evolving technological landscape. “Currently, protecting AI is in a good situation because the office has the opportunity to fine-tune existing case law, which will benefit some AI developments,” he said.

Holzwarth-Rochford highlighted the widespread application of AI across technical fields, including mechanical engineering, material sciences, biology, pharmaceuticals, and chemistry. He noted that governmental initiatives such as Germany’s “Industrie 4.0” are encouraging companies to explore AI-driven innovation.

Despite the G 1/19 case focusing on computer simulations rather than AI specifically, the parallels between the two—both relying on computational models and algorithms—mean that existing case law on simulations is highly relevant to AI patenting. The specific application of AI systems will be a critical factor in determining patent eligibility.

Matt Hervey, partner and head of AI at Gowling WLG’s London office, observed that current patent offices, including the EPO, UK Intellectual Property Office (UKIPO), and United States Patent and Trademark Office (USPTO), do not recognize AI as an inventor and require a human inventor to be named. He raised important questions about the long-term implications of this stance.

“Will a lack of protection for inventions by AI fail to reward research and development and lead to more inventions being kept as trade secrets? Should patents be extended to inventions by AI? Or should new forms of monopoly rights be created for such inventions?” Hervey asked.

The regulatory environment for AI is also evolving beyond patent law. In February 2020, European Commission President Ursula von der Leyen announced plans to regulate AI within her first 100 days in office. Although the COVID-19 pandemic has delayed progress, national-level discussions on AI governance continue to gain momentum.

As AI technologies increasingly permeate diverse industries, the patent community awaits the G 1/19 decision, which promises to clarify the boundaries of patentability for computer simulations and AI-driven inventions. The ruling will likely influence how patent offices balance technical requirements with fostering innovation in the digital future.