Only technical features can form an “invention” in Germany

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).

Full text of the decision (in German): BGH, Urteil vom 26. Oktober 2010 — X ZR 47/07 — Wiedergabe topografischer Informationen

What does that mean in practice?

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.

Not sure whether your software meets this hurdle? Ask yourself these questions for an initial assessment.

Originally published at on January 18, 2016.

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