Software patents for emerging tech since 2008

Only the technical solution of a technical problem is patent-eligible in Germany


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

With respect to the first hurdle (technical character) the FCJ stated:

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).

Link to the decision (in German): Beschluss vom 22. April 2010 — Xa ZB 20/08 — Dynamische Dokumentengenerierung

Practical advice

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.

Originally published at on January 11, 2016.

About Bastian Best

Bastian Best

I'm a European patent attorney specializing in software patents and a partner in one of the most renowned IP only firms in Europe.

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By Bastian Best Software patents for emerging tech since 2008