30 January 2010

Germany following the EPO approach to patentability of CII?

The German Federal Court of Justice (Bundesgerichtshof, BGH) analysed in his decision X ZB 22/07 („Steuerung für Untersuchungsmodalitäten“, in German) of January 20, 2009 under which circumstances a software that is embedded in a larger technical system may represent statutory subject-matter. Some commentators assume that this decision may represent a turnaround of the BGH’s approach to assess technical character of an invention towards that of the Boards of Appeal of the European Patent Office.

EPO approach: The EPO rather strictly follows the problem-solution approach (further reading here, here, here or here) as a rather formalistic scheme for assessing inventive step of a claimed invention based, in brief, on the essential steps of

  1.  identifying features that differentiate a claimed teaching from the closest prior art document;
  2. deriving the invention’s underlying objective problem based on the identified features; and
  3. assessing whether a skilled person would really solve the derived problem by adding the identified differentiating features to the features as taught by the closest prior art.
However, in cases where the technical character of the claimed teaching is not prima facie evident, it first has to be assessed, whether the claimed teaching relates to statutory subject-matter according to Article 52 EPC, i.e. is a technical invention. After years of more or less “dialectic” discussions on which features may render a claim sufficiently technical and which may not, the EPO determined in 2004 in his decision T258/03 “Auction Method/Hitachi” that the plain executability of a computer program by a computer already renders the program sufficiently technical. That is, one may directly proceed to assessing inventive step by means of the problem-solution approach, as long as the invention at least involves the execution of a program on a processor – which virtually is always the case even for business methods that only involve data transmission via the internet.

On the first sight, this approach only shifts the examination of a claims technical character to a different stage of substantive examination, since only technical features can form a basis for granting inventive step. However, since inventive step may only be granted if a technical problem can be derived from the identified difference features, the problem-solution approach, in fact, shifts the identification of isolated technical features to a more global view on a claim’s teaching as a whole, involving the question whether the derived problem is a technical problem and whether the effect provided by the identified difference features represents a technical solution of that problem, whereas the identified difference features may comprise both technical and non-technical features.

As a consequence thereof, the EPO’s approach somewhat simplifies examining whether a method claim represents statutory subject-matter, since assessing inventive step based on a global view on the effect of a group of technical and non-technical features is in most cases easier than assessing whether or not a claim comprises technical features that can jump over the hurdle of “computer programs as such” according to Article 52 EPC.

It is commonly accepted by the EPO’s Boards of Appeal that improving the performance, efficiency or quality of a technical apparatus or system represents a technical problem. A software program running on that apparatus or on an additional control unit connected to the apparatus causing such improvement will thus almost always be considered technical, even though only computational steps may be claimed. The problem solution approach thus tends to focus on influencing of hardware components as statutory subject-matter.

The “new” BGH approach: Now the BGH established a somewhat similar approach in “Steuerung von Untersuchungsmodalitäten”, which is, however, limited to those cases where the claimed method is embedded in the processing of a technical apparatus or system (see here, in German).

In the underlying patent application a method for processing relevant medical data upon a medical examination of a patient was claimed, in which a computer program selects an adequate medical imaging device for examining the patient, whereas one or more examining or measuring protocols defining the intended examination are selected from a symptom- or diagnosis-based database and are transmitted to the selected imaging device for controlling the imaging process.

In the second instance, the Federal Patent Court (Bundespatentgericht, BPatG) has rejected the application due to lack of statutory subject-matter according to § 1 III, IV PatG after an assessment of the claimed teaching as a whole, since from the selection process of the computer program, as the essence of the claimed teaching, only the transmission of the selected protocols to the selected imaging device remains for assessing the claim’s technical character, since all mental aspects of the claimed selection/decision process have to be removed as non-statutory.

In the third instance, however, the BGH remanded the BPatG’s decision due to wrong reasoning and referred the case back to the second instance. In contrast to the BPatG, the BGH found that already the steps of processing, storing and transmitting data by a technical apparatus renders the rejected claim sufficiently technical to overcome the exclusions of § 1 I PatG (!!), which very much reminds me of the EPO approach as provided e.g. in “Auction Method/Hitachi”. Further, and even more surprisingly, the BGH appears not to consider this reasoning new or at least somehow amended as compared to his previous decisions, since the present decision is seen in line with X ZB 11/98 (Logikverifikation), according to which the essential issue is whether or not a claimed method is embedded in a technical setting such that technical effects may be achieved and not, as apparently argued by the BPatG, that the technical character of a claim may be negated if this claim comprises technical an non-technical features.

In the present decision, the BGH explicitly states that the question whether or not a claim also comprises non-technicial features is completely irrelevant for assessing the claim’s technical character. The BGH’s old “Kerntheorie” (core theory), which is based on the concept of assessing the technical character of a claim’s core teaching, is explicitly said to be considered non-appropriate for assessing a claim’s technical character already since the Senate’s decision X ZB 15/98 (Tauchcomputer) in 2000.

Conclusion: The decision clarifies that a software program that is embedded in a larger technical system and that involves steps of processing, storing and transmitting data by a technical apparatus represents statutory subject-matter according to § 1 PatG, which corresponds to the EPO’s approach as presented in “auction method/Hitachi” according to which executability of a computer program by a computer is sufficient to render the claim technical.

Both concepts for assessing statutory subject-matter according to Article 52 EPC, § 1 PatG are focused on computer programs that provide technical effects in that they control a certain apparatus in a desired way, i.e. to embedded systems or the like. However, they do not allow any conclusion to and are not appropriate to assess the technical character of computer programs that only process technical data to obtain transformed technical data, e.g. CAD/CAM, simulation, data retrieval or the like, without directly controlling technical apparatuses or a system. Such inventions should of course also be considered as statutory subject-matter that may be awarded a patent, as long as they do not represent business methods, mathematical methods, sole presentations of information or the like.