Software – Virtual Disclosure at the EPO

In the 2016 decision T 2440/12-Fluid Flow Simulation/SIMCON, the Technical Appeal Board 3.5.07 found that a commercially available software package makes the methods it incorporates available to the public because it could be run byline in a virtual machine (VM).

As is well known, a claimed method is not new in Europe if it has been made available to the public before the effective filing date. IN Fluid flow simulation/SIMCON, the patentee sold software incorporating the invention before the effective filing date of their European patent. The relevant question was whether the software, which could be implemented on a computer, is a public disclosure of the method as claimed.

The patentee argued that the software does not enable the person skilled in the art to reconstruct the mathematical model underlying the claimed method. The claim was presented in the terminology of the model for simulating fluid flow, including the use of a framework of rod elements and a surface mesh. When the software is used or its code is analyzed, these mathematical constructs are indistinguishable.

On the other hand, the objector argued that the software represents the same method in a different format, namely in computer-readable machine code. The machine code itself may not convey the relevant information to a user who cannot understand it. However, this code can be translated via disassembly of the software into human-readable assembly code. Alternatively, the information can be derived by executing the software step-by-step on a VM to reveal all the operations performed by the processor.

The patentee successfully argued that a user would have been restricted by copyright from disassembling the software. A European copyright directive (91/250/EEC) restricts the decompilation of software. Although the Board was unsure whether a similar restriction applies in all the states where the software could have been used, the doubt was enough to push the Board away from the dismantling argument. However, the board was happy to follow the WC argument.

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A VM is a piece of software that acts as a separate computer inside a host computer. The VM allows the user to follow the actions directed by software executed on the VM. The state of the VM can be saved and restored later. This theoretically makes it possible to determine which operations have been performed by comparing stored VM states. According to the VM argument, by running the fluid flow simulation software on a VM, it would theoretically be possible to understand the details of what the software is doing by repeatedly saving and comparing VM states while running the software step by step.

The board’s reasoning is surprising. It does not consider whether the analysis that is theoretically possible is actually practical, especially in the time available.

Various counter-points to this case are given below.

IN T461/88-Microchip, the Technical Appeals Board 3.2.03 found that the public did not have enough time (a year is not long enough) or motivation to reverse engineer a microchip so that the program stored on the microchip was not publicly available. However in Fluid flow simulation/SIMCONthe Board did not consider time to be a limiting factor for the incremental execution of the software on a VM.

IN G1/92-Availability to the public, the Expanded Board of Appeal found that the chemical composition of a product is state of the art when “it is possible for the person skilled in the art to discover the composition or internal structure of the product and reproduce it without undue strain”. It is unclear whether “without burden” applies only to reproduction of the product or further to discovering its internal structure. According to the facts of Fluid flow simulation/SIMCON, the method could easily be executed repeatedly (arguably, the method claims are analogous to the reproduction of a product), but it was extremely burdensome to discover the internal operations of a processor implementing the software. Therefore, Fluid flow simulation/SIMCON is arguably consistent with accessibility to the public if “without burden” claim only applies to reproduction of the invention. Alternatively, it may be that i Fluid flow simulation/SIMCON the board decided that Availability to the public is not directly applicable to procedure requirements.

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IN Navitaire Inc v Easyjet Airline Cowhich is a British copyright case, Navitaire Inc claimed that EasyJet Airline Co.non-text copying” when they developed their own software so that they were indistinguishable from software licensed from Navitaire Inc. Although Navitaire Inc argued that this was in violation of the license, it was found that the license in question did not exclude reverse engineering. It remains untested whether a software license can limit reverse engineering, which could then affect whether the sale of the software constitutes news that destroys publication.

As a side note, i Fluid flow simulation/SIMCON the board identified a third line of argument, apart from the separation argument and the WC argument. The Board suggested that the availability of software is different from a situation where an inventor performs a process in the public domain that is later sought to be patented. In that situation, a viewer must be able to understand the process in order to be able to work with it later. In contrast, a user who has purchased software can repeatedly perform the invention simply by using the software, even if they do not cognitively understand what the software does. Therefore, the board believed that the sale of the software makes the invention it represents publicly available. However, the decision was not based on this argument because it was not made by the opponent.

This case shows that a commercially available software package makes the methods it contains available to the public. A patent application must be registered before software incorporating the invention is marketed. This case also illustrates the board’s 3.5.07 readiness to follow slightly theoretical lines of argument.

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