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29 July 2011, 10:03

Germany's Federal Court of Justice clears up rules on software patents

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In a case concerning industrial property claims for web page display, Germany's Federal Court of Justice (BGH) has handed down a rulingPDFGerman language link, in which it moves closer to the controversial line taken by the European Patent Office (EPO). The EPO sets the bar low for computer programs and online methods in determining whether they provide "further technical effect" for patent eligibility. In a now published ruling from February (X ZR 121/09), the German court says that a method in which data is processed in several stages on a client/server system provides the required "technicity" for patent protection. The court expressly refrained from listing which devices have to be used for patent eligibility.

According to article 52 of the European Patent Convention (EPC) and section 1German language link of the German Patent Act, computer programs and software "as such" cannot be patented. But for decades, the EPO's Board of Appeals has been interpreting this clause to mean that "improving the contrast" of an image or distributing memory more efficiently by means of a program running on a computer constitutes a "technical effect" worthy of protection in principle. The technology has to be new, and "inventiveness" has to be recognisable in further steps of the acceptance test. Critics estimate that tens of thousands of software patents have been given using this justification, and call for the law to be applied more strictly.

In 2010, a ruling handed down by the German Federal Court of Justice on "dynamic document generation" caused an uproar; it found that software that "takes account of a computer's technical features" constitutes "a technical means of solving a technical problem." The court ruled that any working program with input and output is "technical" and hence patentable in principle.

The new ruling is in line with this approach. Siemens had asked the German Patent Office for patent protection (DE 101 15 895 C1) for a method of displaying a recognition feature for previously visited web sites. For deep links leading to other web sites to be depicted, users would first have to be registered on the online information site visited. The patent application refers to a client program that accesses cookies set by the server.

The German court says that this approach fulfils the requirement for further technical effect. Specifically, the court ruled that the invention "instructs the computer's components to perform a particular action, thereby giving instructions for a technical act". But the court also says that a technical process is not patentable simply when a program is used to control a computer system. Because the law excludes software as such from patent protection, the court says that the state of the art has to go beyond "technicity" and give instructions "that help solve a specific technical problem by technical means."

As Alfred Keukenschrijver, presiding judge at the court’s X Civil Senate, writes, this requirement is fulfilled "when the addressing of device components is modified or principally changed", though that is not the goal when registration is shifted to the server or cookies are used. Instead, the court says that technical means are used "when technical features outside of the computer system determine the workflow of a computer program used to solve a problem." Furthermore, the court says that software can also be designed to take account of a system's technical features. The German Federal Court of Justice says these requirements were not fulfilled, thereby upholding the decision made by the German Patent Court, which revoked the patent; Siemens then challenged that revocation.

Munich-based patent attorney Volker Metzler says by this ruling "the German two-stage approach to examination patent-eligibility of software-related inventions can be considered as established". Those who file for patents are "on the safe side" when the claim is formulated as an "embedded system", in other words "as a method controlling a technical apparatus or collecting, evaluating and processing (technical) data by means of a technical apparatus." He says the ruling's reasoning is easier to understand and thus provides "legal certainty"; the aspects discussed can be specifically targeted when software patents are applied for. But he does not expect the ruling to increase the number of software patents. Rather, he feels that patent applications will more often be rejected because of a lack of inventiveness than because of a lack of further technical effect.

(Stefan Krempl / ehe)

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