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.
Originally published at www.europeansoftwarepatents.com on January 25, 2016.