The German Federal Court of Justice raises the bar for software patents in Germany

According to the present decision “Webpage Display” of the German Federal Court of Justice (decision of February 24, 2011 — Case X ZR 121/09 — Webseitenanzeige), software-related inventions have to pass a two-step assessment with respect to exclusion from patent protection as a computer program “as such” (i.e. “software patent”). In this context, the German Federal Court of Justice for the first time positively identifies types of features needed for a software-related invention to overcome the “software patent” exclusion.

The case to be decided in “Webpage display” related to German patent DE 101 15 895 of Siemens AG (English readers may have a look at its US counterpart US 7,296,062) which claims 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 patent to be assessed was essentially directed to the concept of logging and later displaying 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. Some people may call this a prime example of a “software patent”.

In first instance, the Federal Patent Court had argued that the claimed method was not an invention in a field of technology and was hence excluded from patent protection. The Federal Court of Justice, however, held that the claimed method indeed possessed 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 (cf. decision X ZB 22/07 — “Steuerungseinrichtung für Untersuchungsmodalitäten”). In this context, the Court noted that it is irrelevant whether or not the claim explicitly recites the technical devices (server, clients), since for the person skilled in the art of programming browser software it was a self-explanatory fact that the execution of the method steps necessitates the use of computers within a network.

However, the Court also held that the claimed method is still excluded from patent protection as a computer program “as such” (i.e. “software patent”) pursuant to Section 1 (3) No 3 and (4) German Patent Act. 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. In the present case, the Court noted that no modification of system components took place in the claimed method. Also 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 the technical limitations of the computer. As a result, technical means solving a specific technical problem could not be identified and the Court concluded that the subject matter claimed is excluded from patent protection for being directed to a computer program “as such” (i.e. “software patent”).

Remarks

The decision “Webpage display” of the German Federal Court of Justice is remarkable on multiple levels, since it systematically deviates from the current practice of the Boards of Appeal of the European Patent Office (EPO) with respect to software patenting:

The EPO regards the “first hurdle” of a technical character as the only requirement to overcome the exclusion from patent protection. The additional question (“second hurdle“) whether a technical problem is solved using technical means is to be answered when assessing inventive step under Art. 56 EPC — after an analysis of the closest prior art. In this regard, only novel features contributing to the solution of the technical problem are taken into account (cf. OJ EPO 11/2007, 594).

By contrast, the German Federal Court of Justice now explicitly requires a two-step approach already during the assessment of the “first hurdle”. As recited in headnotes a) and b) of the decision “Webpage display”, it is to be determined in a first step whether the subject matter claimed involves, at least in part, an invention in a field of technology (Section 1 (1) German Patent Act). Then, in a second step, it has to be assessed whether it constitutes merely an excluded “software patent”, i.e. a computer program “as such” (Section 1 (3) No 3 and (4) German Patent Act), which is not the case if the invention comprises instructions solving a specific technical problem with technical means. Notably, this second step is performed independently from a structured analysis of the prior art.

Although the first step can be successfully passed even if technical means necessary for implementing the claimed method are not explicitly recited in the claim — in line with the earlier decisions “Dynamic generation of documents” (decision of April 22, 2010 — Case Xa ZB 20/08 — “Dynamische Dokumentengenerierung”) and “Display of topographic information” (decision of October 26, 2010 — Case X ZR 47/07 — “Wiedergabe topografischer Informationen”) — the second step now turns out to be the challenging test for many software-related inventions.

This is since the German court for the first time defines an exhaustive list of three acceptable types of features of a software-related invention to overcome the exclusion for being a computer program “as such” (i.e. a “software patent”):

  • Accordingly, a technical means for solving a technical problem is present if system components are modified or used in a fundamentally different manner. This admissible feature type assures that hardware-related inventions or inventions relating to software that is closely tied to hardware are still patentable in Germany.
  • A technical means for solving a technical problem is also present if the execution of the software is determined by technical facts outside the computer. In this context the Court notes between the lines that not any sort of external technical facts are sufficient, but that e.g. “technical environment parameters” captured by suitable measurement equipment could constitute such external technical facts. It appears that this admissible feature type is e.g. directed to embedded software controlling a technical apparatus or process.
  • Finally, if the software takes into account the technical limitations of a certain computer, it is also considered to constitute technical means for solving a technical problem.

However, software not having any features in the sense of at least one of those three types will be rejected as a computer program “as such” (i.e. as a non-statutory “software patent”).

In summary, the present decision “Webpage display” appears to have considerably raised the bar for software-related inventions (i.e. “software patents”) when it comes to the assessment of exclusion from patent protection. As a result, it is advisable for applicants seeking software patents to file software-related applications that may not clearly meet the above-explained criteria rather with the EPO than with the German Patent and Trademark Office — at least as long as the situation is not changed by future decisions of the German Federal Court of Justice.

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