24 January 2012

The European Patent Office and its Approach to 'Software Patents' including some comparative Comments on the German PTO's Practice

On the ksnh::law blog we take exceptional care about the discussion on and legal development of protection of computer-implemented inventions, aka 'software patents'.

With our latest posting we completed a small series of three articles on the respective legal foundations of and the examining practise in this field of European and German patent law. 

EPO Examining Practice:
Patents for Software? How the EPO Examines Software Inventions and what Lessons can be Learned.
This article provides an in-depth analysis of the extended problem/solution approach, the most important formal examining scheme for software inventions as developed by the Boards of Appeal around the turn of the century. The specific characteristics of that approach is that non-technical features of a claim can be considered as prior art upon examining inventive step – to the detriment of applicants (!). The second headnote of the Comvik decision T 641/00 puts this important finding like that:
II.  Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.
Consequently, applicants and especially their patent attorneys should make sure that the specification and the claims do not at all comprise non-technical aspects or or only to the required extent, in order to prevent that proper and limiting technical features are “devaluated”.

EPO Legal Foundations (Boards of Appeal Case Law):
EPO Case Law on Patentability of Software Inventions From the 80ies Until Now. 
The legal development in this field did not always go linearly and some approaches were abandoned or modified throughout the years. However, since the G 3/08 opinion basically affirmed the status quo, i.e. the pragmatic problem-solution approach as sketched in T 641/00 (COMVIK) and T 258/03 (Hitachi), case law has reached a rather stable situation, providing legal certainty for applicants of software inventions. Thus, in this particular question, Europe appears to be one step ahead of the US and other important patent jurisdictions in the world.

German Practice and Case Law:
German Federal Court of Justice Confirms New German Approach To Software Patent Examination
In the past three years we were handed a number of quite interesting decisions from the German Federal Court of Justice, especially
By the latter decision, the German two-stage approach to examination patent-eligibility of software-related inventions can be considered established.

Even though the Germany approach resembles the EPO's approach, it is not identical with it. The difference between the approaches might be illustrated by the fact that a pure business method implemented on a conventional computer or computer network would in Germany be excluded as a “computer program as such” without even considering prior art, while the EPO would rejected this method for lack of inventive step since its differences over prior art only involve non-technical features.

In Germany, applicants of software inventions will be on the safe side if the invention is claimed within an embedded system framework, i.e. as a method controlling a technical apparatus or collecting, evaluating and processing (technical) data by means of a technical apparatus.

The recent development of German case law is to be considered positive for applicants of software inventions, as it overcomes the earlier investigation of the individual case and thus creates legal certainty due to an easier-to-understand and thus easier-to-adopt examination systematics.