German software patent 101: prosecution and enforcement in a nutshell


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.


Originally published at www.europeansoftwarepatents.com on March 14, 2016.

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