BGH Confirms Utility Model Protection for Software Inventions

German utility model protection is available for technical inventions that are novel and inventive and it features speedy registration, a restricted state of the art that excludes public use abroad, a 6-month grace period, a reduced inventiveness requirement and a flexible splitting off procedure. Utility models, like patents, have claims and indeed can have more than one independent claim, but method claims are not allowed. Well, that was the last word on the subject until the German Supreme Court decision Signalfolge (GRUR 2004, page 495).

The utility model of this decision related to a system for variably tariffing Internet charges. The invention was claimed as a system, a computer program product and a computer. The Utility Model Section of the German Patent and Trade Mark Office rejected the application because it considered the system claims to relate to a method. The applicant appealed this decision and filed amended claims. Some of the amended claims related to a signal sequence representative of data for transmission through the Internet. The Patent Court found that the signal sequence claims were directed to a method and rejected the appeal. However, a further appeal to the German Supreme Court BGH (Bundesgerichtshof) was allowed.

The BGH overturned the Patent Court’s decision and found that a signal sequence was a physical entity for which utility model protection was available. The BGH reasoned that the “requirement of physical expansion” (Raumformerfordernis) of the old Utility Model Act no longer applied. The exclusion of methods had to be interpreted as relating to “conventional” methods such as methods of operation or production methods. This did not include a signal sequence, regardless of the fact that the signal sequence represented data to be processed by a computer (i.e. controlling the operation of the computer). The BGH referred the case back to the Patent Court to decide whether the invention related to a computer program as such.

Comment

With this decision, the BGH has confirmed the availability of utility model protection for software-implemented inventions and has clarified the limits of exclusion for method-based inventions. Methods per se are not protectable; however, if claiming a device (computer or computer program product) arranged to perform the method instead, the exclusion may be circumvented. As many method inventions nowadays relate to computer controlled operations, utility model protection is de facto available and a matter of careful claim drafting. As a practical consequence, the exclusion of methods from utility model protection remains relevant for methods of production only.