18 March 2011

Federal Court of Justice Confirms Turnaround Towards EPA Patentability Approach (X ZR 47/07)

[J. Hevelius's azimuthal quadrant]


On 26 October 2010, decision X ZR 47/07 ("Display of Topographic Information") has been issued by the Xth Civil Panel of the Federal Court of Justice (Bundesgerichtshof, BGH) under Cief Judge Peter Maier-Beck, who already held the chairmanship in cases Xa ZB 20/08 ("Dynamic Document Generation") of April 22, 2010 (see earlier posting) and Xa ZR 4/07 ("Glas Bottle Analysis") of 4 February 2010 (see earlier posting), both of which being considered in line with X ZB 22/07 („Control of Examination Modalities") of 20 January 2009 (see earlier posting). The latter was assumed to represent a turnaround of the Court of Justice's approach to assess technical character of an invention towards that of the Boards of Appeal of the European Patent Office

 I.  The first-instance before the Federal Patent Court

European Patent EP 0 378 271 to Philips N.V. has been granted on 03.04.1996 with an independent method claim 1 reading
1. A method for the perspective display of a part of a topographic map by selecting, in dependence of a position (c) of a vehicle, topographic information from a data structure, where under the influence of a coordinate transformation the display takes place according to a viewing position (k) which moves together with the position (c) of the vehicle and with a solid angle (g) that takes into account the instantaneous motion of the vehicle, characterized in that for an earthbound vehicle the viewing position is above the earth and the solid angle (g) contains an actual simulated position of the vehicle itself.
and a substantially parallel device claim 17, reading
17. A device for the perspective display of a part of a topo-graphic map, comprising selection means for selecting, in dependence of a position (c) of a vehicle, topographic in-formation form a data structure, coordinate transformation means for executing a coordinate transformation for effec-ting the display according to a viewing position (k) that moves together with the position (c) of the vehicle and with a solid angle (g) that takes into account the instantaneous motion of the vehicle, characterized in that for an earthbound vehicle the viewing position is above the earth and the solid angle (g) contains an actual simulated posi-tion of the vehicle itself.
without any oppositions filed. The nullity action 2 Ni 12/05 (EU) has been filed with the Federal Patent Court (Bundespatentgericht, BPatG) against the validated German part DE 690 26 28. On 14 December 2006, the 2nd Nullity Panel declared the patent null and void on the grounds of, inter alia, lack of patent-eligibility (patentability) according to Art. 52 EPC (see BPatG 2 Ni 12/05).

The Board held that, even though claim 1 provides a solution for the problem of providing a simple method for a user friendly perspective display of part of a topographic map providing more information about the terrain than the regular point of view information, the perspective display method is assessed to be not patentable because its teaching does not lie in the technical domain.

The applicant believed that the claimed teaching is technical, since calculating a perspective display in real-time requires technical resources such as a suitably programmed computer or micro-processor, whereas the Senate took the position that, according to established case law of the Federal Court of Justice (BGH), using a suitably programmed computer alone cannot establish the technical nature of the claimed method. In fact, in BGH X ZB 34/03 ("Rentability Determination") the Federal Court of Justice held that
a method achieving a desired success by operating a program for controlling a data processing system so that the desired success is achieved, is not patentability only because of the utilization of electronic data processing. Rather, the claimed teaching must comprise instructions that serve to solve a specific technical problem by technical means.
In this respect, the Senate held that the claimed teaching is only directed to displaying topographic information in a perspective way so that the information is easy recognisable by a human user. This, however, relates to an ergonomic problem solved by a suitable coordinate transform, i.e. a known mathematical operation, rather than  to a specific technical problem solved by technical means

The applicant counter-argued based on EPO case law T 258/03 ("Auction Method/HITACHI") that a method being executed by a data processing device ist to be recognized as a technical invention within the meaning of Art. 52 EPC. The Senate acknowledged that applying the T 258/03 approach to the present invention would - due to the automated execution of the claimed method by a computer - indeed lead to recognising the present invention as technical. The method steps relating to the representation of easy-to-recognise information, however, do not contribute to the state of the art and thus have to be omitted upon assessing inventive step, so that the present invention would not be inventive according to the EPO's Hitachi approach.

That is, the 4th Nullity Senate of the Federal Patent Court considered the invention not technical according to German standards and technical but not inventive according to EPO standards.

II.  The Appeal before the Federal Court of Justice 

The headnotes of X ZR 47/07 read:
  1. The subject-matter of a method related to the reproduction of topographic information using a technical device is not excluded from patent protection according to Art. 52(2) c, d EPC, if at least one aspect of the claimed teaching solves a technical problem.
  2. Upon assessing inventive step, only those instructions are to be considered that determine or at least influence the solution of the problem by technical means.
  3. The selection of a (central perspective) representation of topographic information that is appropriate for navigating a vehicle will be disregarded upon assessment of inventive step as a non-technical information for the person skilled in the art.
The Federal Court of Justice upheld the revocation but - interestingly - argued that the subject-matter of the invention lies in a technical area and thus meets the requirements of Art. 52 EPC (cf. III.1) but is rendered obvious by the cited prior art (cf. III.2).

Under the essential paragraph III.1 of the decision, The Board's opinion towards Art. 52 EPC goes along the following lines:
Technical Character: Referring to Xa ZB 20/08, "Dynamic Document Generation", (see here) and X ZB 22/07, "Control of Examination Modalities", (see here), the Board explained that a method for executing steps by electronic data processing would always possess the required technical character even if the method only intends to process, store and transmit data by a technical device. It does not matter whether or not the claim comprises additional non-technical features, which may charachterize the claimed teaching. Whether combinations of technical or non-technical features are excluded from patent protection only depends on whether they are new and involve an inventive step.

The present case relates to a technical teaching, since claim 1 is directed to a method according to which, for creating a perspective representation of a part of a topographic map being enriched by simulated positions of a vehicle, topographic data is selected from a data base depending on the moving direction and the actual position of the vehicle, the selected data is processed in a determined way and finally a defined display output is performed. Such a method can only be executed by a technical device and thus has a technical character

No computer program as such: Since Art. 52 (2) c EPC excludes computer programs as such from patentability, the claimed invention requires instructions serving to solve a specific technical problem by technical means, whereas instructions lying outside the technical domain are not sufficient (cf. X ZB 20/03, X ZB 34/03, Xa ZB 20/08, X ZB 22/07). The same applies to a method for displaying information (X ZR 188/01).

It is, however, sufficient for circumventing the exclusion of Art. 52 (2) c EPC if one aspect of the claim solves a technical problem. The exclusion of "computer programs as such" is - in accordance with the case law of the EPO Boards of Appeal (cf. G 3/08) - implemented in that only those features are considered upon assessing inventive step that determine or at least influence a solution of a problem by technical means (cf. Xa ZB 20/08). The "upstream" test for existence of one of the legislative exclusions of Art. 52 (2) EPC is thus only a kind of "coarse screening" to filter out those cases where the claimed teaching contains absolutely no technical instructions that may be subject to an assessment of inventive step.
Conclusion: By this decision, the Xth Panel of the Federal Curt of Justice after Xa ZB 20/08 ("Dynamic Document Generation") and X ZB 22/07 („Control of Examination Modalities") again clarifies that it intends to shift the German "technicality" doctrine towards the so called adapted problem/solution approach of the EPO Board's of Appeal, as developed in T 208/84 (Vicom) and T 641/00 (Comvik) and recently confirmed by the Enlarged Board of Appeal's opinion on case G 3/08.

The crucial statements is that Art. 52 (2) EPC is only intended a kind of 'coarse screening' to filter out those cases where the claimed teaching contains absolutely no technical instructions that may be subject to an assessment of inventive step", which expresses almost exactly the relationship between the lower "technical character" hurdle and the much higher "inventive step" hurdle of the EPO's adapted problem/solution approach.

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