Computer Program Inventions before the German Supreme Court
A Brief Summary
In three decisions between 1999 and 2001, the German Supreme Court (BGH) redefined the meaning of technicality in the context of computer program inventions.
In the first two decisions (summarised below), the Supreme Court broadly strengthened the patentability of computer implemented inventions. The first decision brought a welcome departure from the long-standing notion that such inventions were only patentable if they involved the operation of controllable natural forces to achieve a causally predictable result without human intervention (a definition that has raised its ugly head again in the European Parliament). The second decision built upon the first by confirming that claims to computers do indeed have technical character. The focus was shifted to whether the contribution over the art is a technical contribution that involves an inventive step. This is the approach now favoured by the EPO.
The third decision took one step forwards and two steps back. It confirmed the allowability of Beauregard claims to a computer program stored on a medium, but introduced some vague tests regarding "conventional" and "non-conventional" technical fields and the “peculiarity” outside conventional technical fields. In a separate article we explore how the German Patent Court (Bundespatentgericht ) is now struggling with these vague definitions.
1) Logikverifikation (GRUR 2000, 498)
The patent application at issue related to a method of verifying the layout of an integrated circuit using a computer program. The verification of circuit layouts is normally performed by comparing the physical circuit layout with the original circuit design. The invention resided in transforming the circuit layout and design in order to allocate corresponding sections thereof which could then be compared separately.
The German Patent Office had rejected the application on the basis that the claimed method did not employ technical means and could be performed using pen and paper.
Although the applicant subsequently amended the claim to recite that the method was performed by a computer, the German Patent Court upheld the decision. It found that the invention was directed to a rule for re-arranging data and did not result in a new design or use of a data processing system and therefore was not technical.
The BGH overturned this decision. It found that the invention related to a step in the process of manufacture of integrated circuits – i.e. a technical process - and that the purpose of the invention was therefore of a technical nature. Also, due to the character of the end product (integrated circuits), the invention was the result of technical considerations. This was stated by the BGH to be a suitable criterion - also applied by the EPO - to identify the required technical character of an invention.
Comment:
This decision expands the meaning of technicality set out in earlier BGH decisions, in particular “Chinesische Schriftzeichen” (GRUR 1992, 36) and “Rote Taube” (GRUR 1969, 672). In these decisions, a teaching was considered technical if it made use of the operation of controllable natural forces, other than the working of human intelligence, to achieve a causally predictable result.
In “Logikverifikation”, the BGH stated that an invention was technical in nature if its character resided in findings based on technical considerations, even if its teaching was not directed to achieving an effect, with a discernable cause, brought about by the direct application of controllable natural forces without intervention of the human mind.
Ironically, it is the older meaning of technicality originating from “Rote Taube” which is used in the present draft Directive of the European Parliament to define patentable computer-implemented inventions (see related article in this Patent Issues). If the draft Directive is adopted on this basis (which would appear unlikely), the new BGH approach could not be upheld.
2) Sprachanalyseeinrichtung (GRUR 2000, 1007)
The invention in this application related to a language analysis device, in which a text was divided into syntactic units and probable linguistic relations between units were determined using a database. The device further provided for user input to determine a correct relation in case of multiple probable relations.
The Patent Court in appeal instance had refused the application on the ground that the contribution which the claimed invention made to the state of the art was of a non-technical nature, and that it consisted of the implementation of a set of grammatical (i.e. non-technical) rules on a common computer.
The BGH overturned this finding and indicated that the Patent Court had confused the requirements of technicality and novelty/inventive step. The BGH stated that any industrially producible and commercially applicable device which in operation spent energy and in which different switching states occurred was to be considered a technical device. This included standard computers.
The BGH added that a technical device was technical regardless of whether or not it made a technical contribution to the state of the art. The latter was a matter of novelty/inventive step.
Also, the technical character of a device was not prejudiced by requiring or allowing human interaction.
Comment:
With this decision, the BGH made clear that a claim directed to a data processing device was of a technical character, and no exceptions appear to have been contemplated. In consequence, any software should ”pass muster” for patentability under Section 1 of the German Patents Act, provided it is claimed in conjunction with hardware. What remains, then, is to determine whether the contribution over the art is a technical contribution and, if so, does it involve an inventive step.
If this decision is applied correctly by the Patent Office, the focus of attention is likely to shift towards the question of how an invention directed to a data processing system consisting of a mixture of technical and non-technical features is to be assessed with respect to novelty/inventive step. In any case, the decision confirms that it is recommendable to include device or system claims in patent applications directed to software inventions.
3) Suche fehlerhafter Zeichenketten/Tippfehler (GRUR 2002, 871)
In this case, the Patent Court had upheld the refusal of a Beauregard-type of claim by the German Patent Office on the ground that the claim related to a computer program as such. The claim read:
Digital storage medium, in particular a disk, with electronically readable control signals, which can interact with a programmable computer system such that a method according to any of the claims 1 to 17 is performed.
Claims 1 to 17 related to a method of identifying and correcting typos in a digitally stored text and had been allowed by the German Patent Office.
The Patent Court interpreted digitally stored control signals to be program code, and as such to be a computer program excluded from patentability.
The BGH found this interpretation of what was to be considered a non-patentable computer program “as such” too narrow and stated that the determination had to be made in accordance with the intended purpose of the exclusion from patentability provision. To justify patentability, a computer program had to have a certain degree of “peculiarity” ( Eigenheit).
The BGH explained that claims directed to solving a “concrete” problem in “conventional” technical fields (engineering, physics, chemistry, biology) by performing method steps on a computer were generally patentable. In other “non-conventional” fields, an assessment was necessary of whether or not the invention was characterised by such “peculiarity” justifying patent protection.
The BGH went on to give examples of what it generally considered patentable computer-related inventions: Software integrated in a technical process; methods forming part in the manufacture of a technical product (see Logikverifikation above); teachings relating to the way a computer operated as such; new computer designs.
The BGH decided that the allowability of the above claim did not depend on its category (digital storage medium with electronically readable control signals), but had to be decided depending on the technical character of the overall combination of features, including those of method claims 1 to 17. The case was referred back to the Patent Court (see below).
Comment:
This decision is confusing as it introduces a distinction between "conventional" and "non-conventional" technical fields and appears to establish a further criterion for patentability of computer programs (“peculiarity”) outside conventional technical fields. It is to be hoped that the BGH used the term "peculiarity" merely to emphasise that an invention should not be considered patentable (technical) only because it employed a computer. Something more was required, as reflected by the examples given by the BGH. In general, for an invention to be patentable, it had to solve a ”concrete technical problem”. Although this appears in line with EPO practice, the question remains what the difference is between a technical problem and a "concrete" technical problem.
The decision also confirms the allowability of “Beauregard”-type claims.