In this decision, the EPO board of appeal had to decide whether a computer program that it is faster than an earlier one makes the required technical contribution.
The board’s answer in a nutshell:
The improved speed of a computer program is not by itself a technical contribution to the art.
In detail, the board held the following:
10. In the board’s view, the argument that a computer program or computer-implemented method is inventive because it is faster than an earlier one is on its own insufficient to establish an inventive step. More specifically, the improved speed of a computer program is not by itself a technical contribution to the art.
10.1 By way of illustration, let it be assumed that the method in question is a non-technical one, for example a mathematical method or a method of doing business.
10.2 Under Article 52(2)(a) and (c) and (3) EPC, this method will not be regarded as an invention in the sense of Article 52(1) EPC.
10.3 Any computer program implementing that method will, of necessity, need a particular amount of computing resources, in particular time. This is merely a consequence of the “normal” physical interactions between program (software) and computer (hardware) (see T 1173/97, OJ EPO 1999, 609; headnote and reasons 6.6, 9.6, 13). According to established jurisprudence of the boards of appeal, the computer program would thus be found not to comply with Article 52(2)(c) and (3) EPC for lack of a “further” technical effect. And because the computing time does not contribute to the technical character of the computer program, it could not support the presence of inventive step of a corresponding computer-implemented method (see T 641/00, OJ EPO 2003, 352; headnote 1).
Accordingly, speeding up the response time of e.g., a software controlling a production plant is patentable, but speeding up a business method is not.
10.4 These findings cannot be changed by a document which discloses an alternative, earlier non-technical method which takes longer to carry out on a computer. In other words, it cannot be argued that a computer program must be regarded as an invention in the sense of Article 52(1) EPC, i.e. as a technical invention, for the sole reason that an earlier computer program happens to exist which solves the same, non-technical problem more slowly (see also T 42/10, reasons 2.12, for a similar conclusion). Otherwise, the exclusion of computer-implemented methods under Article 52(2) and (3) EPC would become meaningless, because for any given computer program a less efficient one is either known or conceivable. As a consequence, a computer-implemented method cannot be found to show an inventive step for the sole reason that a slower computer-implemented method exists in the prior art.
10.5 Therefore, for a computer-implemented method or a computer program to be patentable it must be established that it has a “further” technical effect and solves a technical problem independently of its absolute or relative computing time. Only then, and only if the alleged speed-up affects an established technical effect, can it be argued that the speed-up contributes to a technical effect and thus to inventive step (see again T 641/00, headnote 1).
11. Returning to the claimed invention (see point 9.2), the board accepts that certain kinds of cache may well be accepted as the technical solution to a technical problem. This may be the case, for instance, for a fast page cache in RAM to avoid repeated access to a slow peripheral hard disk.
11.1 However, the claimed “cache” is not such a cache. In fact, little detail of the cache is claimed. For example, the claims cover the possibility that each object stores the values of its dependent properties in place along with a flag indicating their validity, and that the term “cache” is merely a way of referring to the totality of these local property copies.
11.2 Thus, the claimed concept of caching does not go beyond the idea of memorising a value that one might need again and its validity, so that the effort involved in obtaining it need not always be repeated. In the board’s view, this idea is obvious from first principles.
11.3 Moreover, the claimed method of “caching” a value and its validity achieves, if anything, a speed-up of an entirely abstract method (see point 5 above) and thus is, as argued above, insufficient to establish that the claimed computer-implemented method solves a technical problem.
12. In summary, the appellant did not convince the board that the claimed invention had any genuinely technical effect over D2. In fact, it also failed to show that the claimed method could be considered to have any “further” technical effect beyond being computer-implemented.
13. Therefore, the board finds that the subject-matter of claim 1 according to the main request lacks inventive step, Article 56 EPC 1973.
This post summarizes the prosecution process of German patent applications and the enforcement of German patents. The explanations mostly apply to software-related patents as well as to any other German patent regardless of its technical field.
How to get a German software patent?
Patent protection in Germany can be obtained either nationally by filing a national German patent application with the German Patent and Trademark Office or by designating Germany in a European patent application and subsequently validating the granted European patent in Germany. This post is restricted to German patent applications that have been filed nationally. The provisions of the EPC and the case law of the EPO concerning software are discussed in other places of this blog.
German patent applications are filed with the German Patent and Trademark Office (GPTO) in Munich, which examines patents before granting a patent thereon (or rejecting the application). In contrast to many other countries, a request for examination can be postponed up to seven years after the filing date, allowing the evaluation of the economic relevance of an invention before investing the costs for the examination procedure. The official fees for filing a national German patent application with ten claims including the examination fee are presently EUR 390.00.
Once a request for examination has been filed, the examination procedure is very similar to the US examination procedure. The examining division typically issues one or more official actions to which applicant can respond with arguments and/or amendments of the claims and the description within the limit of the original disclosure. If considered meaningful for an effective examination, the examiner may also hold an oral interview with applicant.
In 2014, 65,958 patent applications were filed with the German Patent and Trademark Office, including 59,916 direct national German filings and 6,042 PCT applications entering the German national phase (see the GPTO’s annual report). There are no official data available concerning the average time period of the examination. General experience, however, shows that it takes between three and four years after the examination request before a case is granted (or rejected).
If a German patent application is rejected, one can file an appeal with the Federal Patent Court (Bundespatentgericht), which is also based in Munich. An appeal senate of the Federal Patent Court will then fully review the case. If requested, an oral procedure will be part of the appeal procedure. You can find discussion of almost all software patent-related decisions of the Federal Patent Court here in this blog.
The appeal senate comprises three technically trained judges who have typically been experienced examiners at the Patent Office before being promoted as a patent judge, and a legally trained judge. In view of a considerable backlog of appeal cases accumulated at the Federal Patent Court, the appeal procedure takes several years.
If the application is still rejected, a legal appeal to the German Federal Court of Justice can be filed, provided it is admitted by the appeal senate of the Federal Patent Court that rejected the application. The appeal senate will admit the legal appeal only if the decision concerns a legal question of fundamental importance or if a decision of the Federal Court of Justice is needed for a consistent interpretation of the statutes — for example, if there are conflicting decisions of different appeal senates of the Federal Patent Court. Of course, also the highest instance decisions of the Federal Court of Justice with a relation to software inventions are covered in this blog.
A major part of the relevant decisions concerning software patents are decisions of the Federal Court of Justice on such legal appeals admitted by the Federal Patent Court. The X. (10th) senate of the Federal Court of Justice, which decides about such a legal appeal, also decides on the appeals in nullity procedures and legal appeals in infringement procedures.
After publication of the grant of the patent, there is a nine-month opposition period, during which anyone (except the patentee) can raise an opposition against the patent, which leads to a (post-grant) opposition procedure to decide the validity of the patent. As a result, the patent can be maintained, restricted, or revoked. After the opposition period has lapsed or an opposition procedure has terminated, anyone can still challenge the validity of a granted patent by a nullity action filed with the Federal Patent Court.
German applicants do not need professional representation at the Patent Office or the Federal Patent Court, whereas foreign applicants must have a professional representative — that is, a German patent attorney or a German attorney at law. This applies to all procedures concerning a patent (application) in front of the German Patent and Trademark Office, the Federal Patent Court, and the civil courts.
How is a software patent application examined in Germany?
The criteria of technical character and technical contribution are examined by the German Patent and Trademark Office (GPTO) along with the standard criteria of novelty and inventive step (see below). Procedurally, a software patent application is examined in the same way as any other German patent application.
Similar to the situation at the European Patent Office (EPO) or the US Patent and Trademark Office (USPTO), there are guidelines (“Prüfungsrichtlinien”) for the examiners of the GPTO. However, in contrast to the examination procedure at the EPO, the guidelines are not very detailed and somewhat outdated (the current version is from March 2004).
Sections 3.3.3.2.1 and 4.3 of the examination guidelines provide a summary of the decisions of the Federal Court of Justice issued before March 2004. Thus, recent decisions which are particularly important in the software field are not reflected.
As a result, the guidelines do not have a substantial significance for the examination of a patent application. On the contrary, German examiners tend to either directly apply the statutes of the German Patent Act or the decisions of the Federal Patent Court and the Federal Court of Justice. With respect to software-related patent applications, the decisions of the Federal Court of Justice are therefore of primary importance. They clarify the understanding of the statutes in the Patent Act (PatG), in particular of section 1 PatG.
What does novelty mean?
According to section 1(1) PatG, a German patent is granted on an invention only if it is new and involves an inventive step. The general concept of novelty of an invention under the German Patent Act is defined in section 3(1), which reads as follows in an English translation:
(1) An invention shall be considered to be new if it does not form part of the state of the art. The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date determining the priority of the application.
Since the patent statutes have been harmonized throughout Europe, the same or very similar provisions can be found in the patent acts of many other European countries and, in particular, in the European Patent Convention (EPC; cf. Article 54).
Section 3 PatG defines the first-to-file principle. The actual date an invention is made is not relevant to assess the novelty of an invention. By contrast, it is its filing date with the German Patent and Trademark Office that counts, or the filing date of an earlier application, the priority of which is claimed. Anything that was published before this date is prior art and will be taken into account when assessing novelty and inventive step of the subject matter claimed in an application. Later publications are irrelevant.
There are a few exceptions to this general rule, which are defined in the further parts of section 3 PatG. First, any German patent application that has an earlier priority date than the priority date of the application to be examined is also prior art, even if it is only published at a later day. This applies not only to earlier nationally filed German patent application, but also to European applications and International patent applications that designate Germany. However, such an earlier patent application is relevant for novelty only; it is not taken into account with respect to the examination for inventive step. In other words, if the claimed subject matter differs only in a small and even obvious feature from the overall disclosure in the earlier patent application, a German patent can still be granted (if there is no other relevant prior art).
Another exception is that a disclosure of the invention shall not be taken into consideration for the novelty examination, if it occurred no earlier than six months preceding the filing of the application and if it was due to, or in consequence of, an evident abuse in relation to the applicant or her or his legal predecessor. Such a situation may occur if somebody obtains knowledge of the invention or publishes it in a manner that violates a contractual or legal obligation with respect to the inventor with the intent to cause damage to the inventor. Since this is an exception to the general first-to-file principle, it is restrictively applied and by no means a real grace period (as in the case of a German utility model).
Finally, similar to Article 55 of the EPC, section 3 PatG contains a provision that the disclosure of the invention based on a presentation of the invention on certain exhibitions is not novelty-destroying, if the applicant can prove that the invention was actually shown on the exhibition.
What does inventive step mean?
In addition to novelty, the claimed invention must satisfy the further requirement of an inventive step in order to be patentable.
The harmonized European patent law comprises a legal definition of the inventive step, which can be found in section 4 PatG of the German Patent Act and reads as follows in an English translation:
An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
Traditionally, the German Patent and Trademark Office and the Federal Patent Court have applied a comparatively high standard for the inventive step. One reason is that the problem-solution approach developed by the European Patent Office (EPO) is not strictly followed.
On the contrary, the person skilled in the art is often considered to have a substantial amount of skill. Patent applications can be rejected and granted patents revoked even if the prior art in one document or a combination of two documents does not disclose all features of a claim.
It is often sufficient if the examiner of the German Patent and Trademark Office or the judges of the German Federal Patent Court reach the conclusion that the missing feature could have been found by the person skilled in the art based on his general knowledge, when faced with the underlying problem of the invention. That said, inventive step is regularly the most challenging test for any patent application.
Are software patents enforceable in Germany?
There are no restrictions or special provisions for enforcing software patents in Germany.
The protection provided by a German software patent therefore depends (as in the case of any other German patent) on the scope of the independent claims interpreted in light of the description, provided the claims are found to be valid during litigation.
However, the question of a general exclusion of a software-related invention from patent protection may come up again during a nullity procedure initiated by an infringer. This applies even if during its initial examination the German Patent and Trademark Office (GPTO) considered the invention to have a technical character and to provide a technical contribution.
What is your experience with the German office and courts when prosecuting or enforcing software patents? Let me know in the comments!
This is an excerpt of the “Germany” chapter of “Software Patents Worldwide” by Dr. Hans Wegner and Bastian Best. Reprinted from Software Patents Worldwide, Suppl. 22, December 2015, with permission of Kluwer Law International.
While the impact of Alice on US software patents is still heavily discussed, 2016 has so far not produced any revolutionary software-related decisions by the Boards of Appeal of the European Patent Office (EPO) or the German Federal Court of Justice (BGH). The German Federal Patent Court (BPatG), however, has been quite busy. Here’s a quick roundup:
Executive summary:
Cryptography: Improving the level of trust in a digital certificate — not inventive
Controlling task execution for multimedia source encoding — not inventive
Implementing virtual storage pools — not inventive
Mathematics: Validating atomic operations in multiprocessor systems — technical and inventive!
Data retrieval: Generating boolean queries for clustered documents — technical? (in any case not novel)
Mathematics: Prioritizing virtual machine execution based on counters — technical (but inventive?)
Image processing: Determining optimal candidate colors — not inventive
Image rendering: Parallel job execution — technical? (in any case obvious)
New EPO software patent case law
Cryptography: Improving the level of trust in a digital certificate — not inventive
Decision T 2558/12 concerned an examination appeal against the rejection of European patent application No. 06 019 603.7 (“A digital certificate that indicates a parameter of an associated cryptographic token”) for lack of inventive step. Claim 1 was directed to a method for determining by a challenger a level of trust to put in a digital certificate, the challenger allowing/disallowing a trusted action dependent from a predefined level of trust.
Relative to the closest prior art the Board of Appeal identified three differences defined in claim 1, none of which could ultimately establish an inventive step:
The challenger allows or disallows an action according to whether the determined “level of trust” is greater or less than a given threshold: Not inventive, since thresholding is an obvious way of arriving at a binary decision. For example, if keys were trusted the more the longer they are, the “trust level” associated with a key would be effectively the key length. If, then, a policy requirement was a minimum key length it would be obvious for the skilled person to evaluate whether the key length exceeded the minimum length threshold and allow or disallow the requested action accordingly.
The token information contained in the licence is cryptographically signed: Not inventive, since digital signatures are an obvious solution to the problem of ensuring the integrity of the policy-relevant information.
The digital certificate contains physical parameters of the cryptographic token: Here, the invention at stake proposed a set of policy criteria different from those disclosed in the closest prior art. The Board of Appeal, however, took the view that the choice of policy, in itself, does not contribute to the technical character of the invention and thus could not enter the examination of inventive step.
The latter point is interesting, since the Board held that:
[10.2] If one were to introduce the policy that a certain action should only be carried out with a particular kind of tamper-resistant token, then this choice itself would not solve a technical problem. In particular, the security advantage of tamper resistance is achieved by the token rather than the policy decision to require it. Coming up with a new policy thus does not solve a technical problem but expresses the wish to exploit a known advantage.
[10.3] It is noted in passing that a policy need not imply any specific technical advantage. For instance, if one were to decide that only cryptographic tokens of a particular manufacturer were to be trusted […], then this might in itself express some form of “trust” in that manufacturer but leaves open what technical properties it might have to guarantee so as to earn and maintain that trust.
The Board also made some interesting statements regarding the objective technical problem formulated by the appellant:
[7.1] The appellant argues that the invention solves the problem of “provid[ing] an improved approach for determining the level of trust in a digital certificate” (see grounds of appeal, page 5, paragraph 3).
[7.2] The board considers that this formulation is unsuitable for defining the objective technical problem solved by the invention, firstly because, as argued above, the concept of “trust” has no clear, if any, technical meaning, secondly because the level of trust is not “determined” in a technical sense, and, thirdly and foremost, because it is not clear in what manner the invention “improves” the way of “determining the level of trust”.
Controlling task execution for multimedia source encoding — not inventive
Case 18 W (pat) 74/14 concerned an examination appeal against the rejection of German patent application No. 10 2007 010 127.0–53 (“Task execution control method for e.g. multimedia source encoding”). Claim 1 was essentially directed to a method for controlling execution of a first and second task in a periodic time frame based on a comparison of the tasks’ priorities. The overall objective was to maintain a quality of service even for tasks with low priority, in particular in streaming data systems. Relative to the prior art, the court considered the claimed subject-matter obvious. Questions like technical character or exclusion from patentability were not addressed. Read the full decision (in German) here.
Implementing virtual storage pools — not inventive
Case 17 W (pat) 13/13 concerned an examination appeal against the rejection of German patent application No. 11 2009 000 411.3–53 (“Method and system for implementing a virtual storage pool in a virtual environment”). Claim 1 was essentially directed to a system for implementing distributed non-transitory data storage with multiple virtual servers and a virtual storage pool, where virtual storage machines cooperate to implement the virtual storage pool without external shared memory. The court did not identify any non-obvious teaching in view of the cited prior art. Read the full decision (in German) here.
Mathematics: Validating atomic operations in multiprocessor systems — technical and inventive!
Case 18 W (pat) 68/14 concerned an examination appeal against the rejection of German patent application No. 10 2007 009 909.8–53 (“Time stamping transactions to validate atomic operations in multiprocessor systems”). Claim 1 was directed to a multicore processor where a buffer stores a time-stamp for each transaction packet and where a probability is calculated for a failure in an atomic transaction based on the time distance between packets. Notably, the court held that all features of claim 1 — albeit their relation to mathematics — had to be examined for inventive step since they served the solution of the technical problem of properly validating a multi processor system based on “natural forces” (i.e. measurement values). The claimed subject-matter was also not rendered obvious by the prior art and thus the patent was granted. Read the full decision (in German) here.
Data retrieval: Generating boolean queries for clustered documents — technical? (in any case not novel)
Case 17 W (pat) 46/13 concerned an examination appeal against the rejection of German patent application No. 10 2010 007 302.4 (“System and method for generating queries”). Claim 1 was essentially directed to a system for generating a boolean query where a cluster manager clusters training documents based on training tokens and a query manager generates a boolean query based on the occurence of the training token in the clustered training documents. The court saw the objective problem in generating boolean queries which can later be used for returning cluster-relevant documents. The claimed subject-matter was considered to lack novelty relative to the prior art at hand, so that the court left open whether it was excluded from patentability per se or not. Read the full decision (in German) here.
Mathematics: Prioritizing virtual machine execution based on counters — technical (but inventive?)
Case 18 W (pat) 72/14 concerned an examination appeal against the rejection of German patent application No. 11 2006 000 016.0–53 (“Information terminal and virtual machine execution switching method”). Claim 1 was essentially directed to an information terminal with multiple virtual machines where the virtual machines are switched and executed based on a continuously selectable counter. The court held that the claimed subject-matter is not excluded from patentability per se since it solved the technical problem of ensuring the operability of multiple virtual machines without using operating system functionality and based on a prioritization of the virtual machines depending on their resource consumption. The claimed subject-matter was also considered to involve an inventive step over the prior art at hand, however, the court remitted the case back to first instance to perform another search. Read the full decision (in German) here.
Image processing: Determining optimal candidate colors — not inventive
Case 17 W (pat) 56/13 concerned an examination appeal against the rejection of German patent application No. 10 2006 045 416.2 (“Image processing apparatus”). Claim 1 was essentially directed to an image processing method where a color histogram was calculated and a candidate color was determined based certain thresholds. The claimed subject-matter was considered not inventive by the court. Read the full decision (in German) here.
Image rendering: Parallel job execution — technical? (in any case obvious)
Case 17 W (pat) 30/13 concerned an examination appeal against the rejection of German patent application No. 10 2010 028 364.9 (“System, method and computer program for decomposing a sampling task into a plurality of jobs”). Claim 1 was essentially directed to a method for the parallel execution of a sampling task where a sampling task was divided into multiple jobs, each job was executed in parallel using a parallel processing architecture and each job was terminated independently of the other jobs. The court saw the overall objective in the efficient parallelization of processing tasks during image rendering. The court held that the method was rendered obvious in view of the prior art, so that it left open whether the claimed subject-matter was excluded per se from patentability. Read the full decision (in German) here.
Today, patent protection in Germany can be obtained either
nationally by filing a national German patent application with the German Patent and Trademark Office (GPTO); or
by validating a European patent granted by the EPO and designating Germany.
Whereas a national German patent application will be examined for the patentability criteria by the examiners of the GPTO, it is the European Patent Office (EPO) that examines a European patent before grant. The validation of a granted European patent in Germany is then only a formality, without any examination.
Isn’t the law unified?
The statutes in the German Patent Act applied by the GPTO and the German courts are almost identical to the corresponding provisions in the European Patent Convention (EPC). The recent interpretation of the statutes by the German courts, however, differs considerably from the case law of the EPO, although the German Federal Court of Justice (FCJ) has repeatedly stressed that its decisions concerning the patentability of software-related inventions are in line with the decisions of the Boards of Appeal of the EPO.
With a series of recentlandmarkdecisions the German FCJ has considerably raised the bar with respect to the question which software is patent-eligible and which is not.
Therefore, it can be said that the case law of the European Patent Office (EPO) is typically more liberal in this respect than the decisions of the German Patent and Trademark Office (GPTO) and the German courts in terms of applying the harmonized provisions in the EPC and the German Patent Act. There are some exceptions, though.
So what should you do?
Generally speaking, important software-related inventions which are somewhat questionable with respect to their technical contribution should therefore be filed at the EPO, or in parallel at the EPO and the GPTO to maximize the chances of obtaining patent protection in Germany.
Of course, this is only a general rule-of-thumb answer to a general question. As each case is different, you should always seek professional advice before making a decision on your filing strategy.
In any case, keep the following in mind: When a German part of a European patent for a software-related invention, which was granted by the EPO, is later enforced and its validity attacked, it will be the German FCJ that finally decides whether the invention is patentable and whether the German part of the patent is maintained or not.
This article is based on excerpts of the “Germany” chapter of “Software Patents Worldwide” by Dr. Hans Wegner and Bastian Best. Reprinted from Software Patents Worldwide, Suppl. 22, December 2015, with permission of Kluwer Law International.
The Federal Court of Justice (FCJ)’s decision Webpage Display is currently the latest landmark decision dealing with the general methodology behind the patentability of software-related inventions. It establishes the German three-step examination approach and thereby systematically deviates from the two-step approach established at the Boards of Appeal of the European Patent Office (EPO). At the same time, this decision has considerably raised the bar with respect to the exclusion from patentability as computer program “as such”.
The German patent DE 101 15 895 C1 underlying this decision related to a method for generating a displayable presentation for relocating an information page that has been called up by a user from a homepage and which has subsequently been exited. The overall concept was essentially to monitor the sequence of visited (sub)pages of a complex website in order to facilitate the return of the user to a certain page of the website.
Claim 1 of the patent reads in an English translation:
A method for generating a display for the recovery of an information page that has been accessed from a homepage of an information provider and which has subsequently been exited, which is accessible via Internet, an intranet or an extranet, wherein the method comprises the following steps performed by the server:
(a) registering a user during access to the homepage;
(b) registering the information pages of the information provider accessed by the user directly or indirectly from the homepage; and
(c) generating a displayable presentation which reflects the sequence of the information pages of the information provider accessed by the user.
The Federal Patent Court had revoked the patent based on the argument that the claimed method was not an invention in a field of technology and was hence excluded from patent protection.
The FCJ, however, held that the claimed method indeed possesses technical character since the claimed method steps involve networked technical devices, wherein the registering of visited Internet pages and the generating of a displayable presentation constitute typical steps of processing, storing and transmitting data by technical devices. In this context, the following statement of the Federal Court of Justice is noteworthy:
As far as these [technical means] (server, clients) are not explicitly recited in claim 1, this is irrelevant, since it is self-explanatory for the person skilled in the art,…, that the method of claim 1 requires the presence of networked computers. For meeting the requirement of technical character it is sufficient also for a method claim if the invention teaches a specific way of using the components of a computer system and thus provides a technical teaching.
However, the FCJ also held that the claimed method is still excluded from patent protection as a computer program “as such”, again relying on the rationale that in order to overcome this exclusion, a claimed teaching — besides having to possess technical character — must further include instructions for solving a specific technical problem with technical means.
What is remarkable in this decision is that in the assessment of the exclusion from patent protection, the FCJ appears to treat the examples provided in the Dynamical Generation of Documents decision for the presence of a solution to a specific technical problem with technical means as an exhaustive list. In this context, the FCJ held that:
no modification of system components took place in the claimed method;
the execution of the computer program used for the solution of the problem was neither found to be determined by technical facts outside the computer; nor
did the program take into account any technical limitations of the computer.
As a result, technical means solving a specific technical problem could not be identified and the case failed the hurdle of exclusion from patentability for being a computer program “as such”.
The Webpage Display decision is thus remarkable in that it considerably raises the bar for software-related inventions to overcome the hurdle of exclusion from patentability. This is prominently reflected in the decision’s first headnote (English translation):
With regard to inventions concerning devices and methods (programs) for electronic data processing it has to be assessed in a first step whether the subject-matter of the invention lies at least in part in a field of technology (section 1(1) Patent Act). Thereafter, it has to be assessed whether this subject-matter is merely a program for data processing devices as such and is thus excluded from patent protection. The exclusion does not apply when the result of this further assessment is that the teaching comprises instructions which serve the solution of a specific technical problem with technical means.
With the decision Display of Topographic Information the Federal Court of Justice (FCJ) continued its examination methodology for software-related inventions laid out in the Dynamical Generation of Documents decision. In addition, the FCJ held that inventive step (the third hurdle of the German three-step approach) can only be based on the technical features of a patent claim.
The invention
The case to be decided related to a European patent on a method for the perspective display of a part of a topographic map. Claim 1 to be assessed read as follows:
A method for the perspective display of a part of a topographic map by
selecting, in dependence of a position (c) of a vehicle, topographic information from a data structure,
where under the influence of a coordinate transformation the display takes place according to a viewing position (k) which moves together with the position (c) of the vehicle and with a solid angle (g) that takes into account the instantaneous motion of the vehicle,
characterized in that for an earthbound vehicle the viewing position is above the earth and above and behind the vehicle and the solid angle (g) contains an actual simulated position of the vehicle itself, wherein the display is provided according to a principal viewing direction which includes an acute angle with respect to the surface of the earth.
The claimed invention aimed at improving the navigating of a vehicle by providing topographic information of the vehicle’s surrounding in visual form. More precisely, the gist of claim 1 concerned the display of a map in a way that on the one hand takes into account the orientation and movement of the vehicle and on the other hand provides a bird’s eye perspective of the vehicle’s surrounding.
The Federal Patent Court had revoked the patent based on the argument that the claimed subject matter did not concern a field of technology, i.e., for failing the first hurdle of technical character, since the claimed teaching aimed merely at providing topographic information in a form that is more easily consumable by a human user. Besides such a purely ergonomic objective, no instructions were found by the Federal Patent Court which served the solution of a technical problem.
The FCJ in turn confirmed the revocation decision of the Federal Patent Court, but for a different reason:
What the court said
First of all, the FCJ pointed out that according to established case law a method concerning execution steps carried out by means of a computer meets the first hurdle of technical character already if it serves the processing, storing or transmitting of data by means of a technical device. The Federal Court of Justice also emphasized that it is irrelevant whether the claimed subject matter consists of a mix of technical and non-technical features, or which of these features are predominant. Since the claimed method in the case at hand involved the selection of topographic information from a data structure, its processing in a certain manner and its display, it could necessarily be carried out only by means of a technical device and thus met the first hurdle of technical character. Insofar, the FCJ thus followed its earlier decision Dynamical Generation of Documents.
Remarkably, the FCJ also held that the claimed teaching met the second hurdle, i.e., it was found not to be excluded from patentability as a computer program “as such”. Here, the FCJ referred also to the test outlined in the preceding decision Dynamical Generation of Documents, which stipulates that the exclusion from patentability is overcome if the claimed teaching contains instructions serving the solution of a specific technical problem with technical means. In this context, the FCJ stated:
The test of exclusion from patentability serves only as a kind of “coarse filter” for filtering out cases in which the patent claim does not comprise any technical instruction which could be a meaningful basis for the subsequent assessment of inventive step.
However, the subject matter of the assessed claim 1, although meeting the first (technical character) and second hurdle (no exclusion from patentability), was found by the FCJ to fail the third hurdle of inventive step.
In this context, the FCJ stressed that only technical features are to be taken into account for assessing inventive step. In the case at hand, the technical features of claim 1 were found to consist merely in the detection of the current position of the vehicle and in an automated projection thereof onto a map. Combining these technical features, however, was considered obvious in light of the prior art.
This is prominently reflected in the second headnote of the decision (English translation):
In the assessment of inventive step only those instructions are to be taken into account which dominate or at least influence the solution of a technical problem with technical means.
The decision Display of Topographic Information apparently implies a rather low standard for the first two hurdles (technical character and exclusion from patentability), whereas the challenging test was found to be that of inventive step. It appears that with this decision the FCJ has insofar aligned its practice with the approach developed by the Boards of Appeal of the European Patent Office (EPO).
Patents on software-based solutions having a mix of technical and non-technical aspects are only patentable in Germany if the inventive idea lies in the technical aspects. In other words: A non-technical innovation (e.g. a new business method) can never be an “invention” in the sense of the German patent law, but a clever technical implementation thereof can be a patentable invention.
The decision Dynamical Generation of Documents of 22 April 2010 is one of the most important landmark decisions with regard to the patentability of software in Germany, since it establishes the German “three-step approach” for assessing the patentability of software patents, as it is valid today.
The case at stake
The case to be decided was the rejection of a German patent application. The invention was directed to the automated generation of structured documents (e.g. HTML pages) based on template documents such as Java Server Pages.
The relevant patent claim reads as follows (English translation):
A method for dynamically generating structured documents on at least one host computer which communicates with a client, comprising the steps of:
– receiving requirement data from the client at the host computer,
– extracting request parameters from the requirement data,
– mapping the request parameters, by a control module, to a command set of a software-architecture-specific interface module of the host computer,
– dynamically generating a structured document using at least one template document which contains calls of service takers, wherein instructions of the service takers are extracted by the interface module and mapped to a corresponding set of commands of the interface module which is limited to a subset of the service takers, which instructions are executed in a runtime environment of the control module using the mapped request parameters and which define after execution content and/or structure of the generated document,
– transferring the dynamically generated structured document to the client.
The claimed invention aimed at providing a simple way to port template documents between host computers of different technical capabilities so that structured HTML documents could also be automatically generated on host computers which did not allow to install a complete scripting runtime environment.
The Federal Patent Court had rejected the case based on the argument that the — admittedly present — technical problem to compensate the different technical capabilities of the host computers was not solved by technical means but rather by “conceptional considerations”, since the internal operation of the host computer remained unchanged.
The (implicit) justification for the rejection of the application by the Federal Patent Court was that there were no “dominant technical features” in the claim. Only using data processing means, that is, a computer, without modifying it was not considered sufficient for the required technical character.
What the court said
However, the FCJ lifted the rejection and made some interesting statements in its reasoning:
Reference to technical means gives technical character to an invention
For the requirement of a technical character it is […] irrelevant, whether the subject matter of an application includes in addition to technical features also non-technical features, and which features are dominating.
What is more, the FCJ also explicitly confirmed for the first time that for method claims also (not only for apparatus claims) the mere reference to the use of a data processing system is sufficient to meet the first criterion of a technical character:
Since it is irrelevant which features are dominating the claimed teaching, the question whether the invention teaches (principal) modifications of the operation of the components of a data processing system has no relevance. On the contrary, it is sufficient that it teaches the use of such components and thereby provides a teaching for a technical operation […].
However, the FCJ also made clear that technical character is not the only requirement to be met by software-related inventions.
Only the technical solution of a technical problem is patent-eligible
Besides the positive evaluation of the first hurdle (technical character) the FCJ emphasized that the mere technical character is not per se sufficient to overcome the exclusion from patentability as a computer program “as such” (second hurdle):
According to established jurisprudence of the Federal Court of Justice an application concerning a computer program or a method realized by a computer program must in addition to the requirement of technical character also include instructions which concern the solution of a specific technical problem with technical means […]. Due to the exclusion from patentability of computer programs as such […] regularly only such instructions can be the basis for the patentability of a method, which concern a problem solution with such means. Not only the employment of a computer program itself, but the solution of a technical problem by means of a (programmed) computer can be the basis of patentability in view of the exclusion provision.
The application underlying this decision also met this second hurdle, since the FCJ held that the invention solves the technical problem of dynamically generating documents on a server with limited processing resources.
This technical problem was also said to be solved by technical means, since the claimed teaching took into account technical facts of the data processing apparatus. In this respect, the Court stated:
It is sufficient if a data processing program used for the solution of the problem is determined by the technical restrictions outside of the program or if it is the solution to specifically design the program in such a manner that it takes such technical restrictions into account. The latter requirement is fulfilled in the present case.
Nevertheless, the FCJ pointed also in this decision to the third hurdle, that is, the requirement of a technical contribution by solving a technical problem:
When examining novelty and inventive step, the solution of a technical problem is to be in the focus of the considerations. Only if a software-related teaching is novel and based on an inventive step it can be protected. Instructions outside of technology are not sufficient in this context; they are only relevant to the extent that they influence the solution of a technical problem with technical means.
How does that help practitioners?
The above are important statements which will be helpful to argue not only a technical character (first hurdle), but also the non-exclusion from patentability (second hurdle) and a technical contribution (third hurdle) of any software that is designed to overcome hardware specific limitations of a computer.
Besides the introduction of the “three-step” approach to assessing patentability of software inventions, the FCJ also corrected an overly simplistic and restrictive application of the term “dominating features” in the earlier decision Search for Faulty Strings. Following this earlier decision, the examiners of the German Patent and Trademark Office and the Federal Patent Court often rejected applications simply by referring to this term and arguing that the dominating or essential aspects of a claim were not based on technical considerations. Clearly technical aspects of the claim were neglected. However, the FCJ made it very clear in the decision Dynamical Generation of Documents that such an approach is inadmissible for an assessment of the first criterion (technical character).
Alhough the overall methodology established with the decision Dynamical Generation of Documents still applies today, some recent decisions of the FCJ (here and here) indicate that the focus has somewhat moved away from the first and second hurdles (which concern patent-eligibility). Rather, the challenging test for software patents nowadays seems to be that of inventive step (i.e. the third hurdle of the German three-step approach), where a non-obvious technical contribution to the prior art is required.
Are you wondering how to argue in favor of these three hurdles for your software innovation? Our experts can help you!
This article is based on excerpts of the “Germany” chapter of “Software Patents Worldwide” by Dr. Hans Wegner and Bastian Best. Reprinted from Software Patents Worldwide, Suppl. 22, December 2015, with permission of Kluwer Law International.
