25 October 2010

Patentability Issues in the Annual Report 2009 of German Federal Patents Court

The Annual Report 2009 of the German Federal Patent Court (Bundespatentgericht) has just been published. It covers the Court's most important rulings of 2009 regarding patents, utility models, designs
and trademarks, as well as an overview of its business situation. The (shortened) English version of the Report is given on pages 126 to 194.

In regard to one main focus of this blog, the section on computer-implemented inventions and the state of the debate on their patentability (i.e. the German "technical character" doctrine) appears to be the most interesting section of the Report.

On the Court level, this debate is mostly lead between the Federal Patent Court (BPatG) and the Federal Court of Justice (Bundesgerichtshof, BGH), especially between the BPatG's 17th Technical Board of Appeal under Chief Judge Dr. Fritsch and the BGH's Xth Civil Panel under Chief Judges Dr. Mellulis, Scharen and Prof. Meier-Beck. It is not a secret among practitioners that the second-instance BPatG follows a more restrictive approach on patent-eligibility and often rejects patent applications due to lack of technical character, while the third-instance BGH tends to be more liberal - especially in its latest decisions - and quite regularly reverses or remands BPatG decisions.

As the Report only covers BPatG case law from 2009, the BGH's current somewhat differing approach may be exemplified best by the latest decisions X ZB 22/07 of 20 January 2009 and Xa ZB 20/08  of 22 April 2010 (see my related posting here, and here, respectively).

Especially decision X ZB 22/07 ("contol device for examining modalities"), which reversed the BPatG's decision due to wrong reasoning, has been interpreted as a convergence towards the EPO’s approach of assuming that executing a computer program on a computer is sufficient to render the claim technical (see here, here, here, or, relating to this year's EBoA G3/08 opinion, here and here). 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. Theoretically, this decision of early 2009 should have been a guiding line for the below BPatG case law on patent-eligibility:

Here's the Report's section covering "technical teaching on procedure and definition of invention" (highlighting added): 

An invention within the meaning of patent law is a teaching on a systematic procedure of the claimed subject-matter which is technical in nature, implementable and repeatable, and which constitutes the solution of a task by technical considerations. The consequence of this is that patent protection is granted only for inventions in the field of technology. 

I.  Technical Problem

In accordance with the case-law of the Federal Court of Justice, a procedure which uses a program to bring about the success aspired to, with the aid of which a computer is controlled such that the desired success is achieved, is not eligible for patent protection solely because of the process of electronic data processing. Since the law rules out programs for computers as such from patent protection (§ 1 III Nos. 3, 4 PatG), the claimed teaching must, rather, contain instructions serving to solve a concrete technical problem by employing technical means. The situation is identical if it is a matter of whether, as an invention, a claimed teaching is to be regarded as a mathematical method (§ 1 III No. 1 PatG), as a rule or procedure for commercial activities (§ 1 III No. 3 PatG) or as a reproduction of information instructions are claimed with which a concrete technical problem is solved, it is not a matter of whether the patent claim is also based on the use of an algorithm, a purpose of the procedure lying in the commercial field or the information character of results of the procedure (17 W (pat) 123/05).

Subject-matter contained in claims proposing the use of data processing devices, and possibly also encompassing non-technical instructions, requires a differentiated treatment which depends on the evaluation of whether an “invention” exists in a technical field within the meaning of § 1 PatG or of Art. 52 EPC, or whether the invention is new and based on inventive activity ( §§ 3, 4 PatG or Art. 53, 54 EPC).

The 2nd board (2 Ni 30/07) summarised these questions in connection with a “procedure to create a printer’s copy using a central computer linked via a data network with users’ computers” claimed in accordance with the umbrella definition:
  1. The use of computers as intended cannot by itself give rise to the technical nature of the teaching of a patent claim.
  2. A patent claim is in a technical field if it teaches the solution of a concrete technical problem with technical means or measures, and is hence in principle eligible for patent protection.
  3. Not all instructions of the claim are to be taken into account when evaluating whether the teaching of a patent claim which proposes the use of data processing means is based on inventive step, but only those instructions which are technical in nature. Instructions which are in a non-technical field cannot constitute an inventive step.
II.  Programms for Computers:

A procedure for the configuration of a program system to be applied for a medical device is to be regarded as a program for computers “as such”, and is hence not eligible for patent protection if the teaching does not go over and above a program and is separated from a concrete implementation, and if simply stating the purpose “for application for a medical device” changes nothing as to its nature (17 W (pat) 112/08). The claimed use for a device of medical technology only constitutes one possible application which has no impact whatever on the teaching of the patent claim. This also applies to a procedure to localise switching deviation devices using a computer (17 W (pat) 7/06) or in a procedure to align a data compilation displayed on a client data processing device with a source data stock stored on a server computer which aims to allocate a characteristic value to each dataset stating its seniority, and reduces itself to the filtering of the data to be sent to the client using a characteristic comparison value which the server has received from the latter (17 W (pat) 7/06), since the procedure relates to a data organisation and administrative problem which, as a software measure pure and simple, does not solve a concrete technical problem, and hence is not eligible for patent protection. 

III.  Mental or Commercial Activities:

A teaching to use the surfaces of the housing of a coin-operated automated music device as advertising space is not within the technical field. The fact that the machine is a technical device is insignificant since it is based on neither a technical task, nor is a technical problem solved. The claimed teaching merely relates to commercial considerations according to which the device can be used commercially by paying a fee for the affixed advertising, as well as considerations to improve the outward appearance, such as the aesthetic design of the entertainment devices (19 W (pat) 301/09). The same applies to a self-service vending machine referred to as a “Reiseautomat” offering customers access to stored information such as videoclips on hotels or holiday countries, thereby facilitating simple selection among the videoclips available, since the claimed teaching does not contain any instructions serving to solve a concrete technical problem with technical means, but a commercial or informal problem (17 W (pat) 38/08).

(Photo (C) 2006 via Wikimedia under the terms of a CC license)