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.
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.
Originally published at www.europeansoftwarepatents.com on February 1, 2016.