New BGH decisions on the patentability of software inventions

European patent law continues to wrestle with the treatment of computer-related inventions, as the attempt by the EU Commission to codify the criteria for patentability (the draft “Software Directive”) collapsed last year amidst anger and recrimination from the Open Source movement on the one hand and larger patentees on the other.

In our last two editions of this newsletter, we reported on various decisions from the Bundesgerichthof (“BGH”) – the German Federal Court - and the German Patent Court, on the patentability of software inventions. The BGH has since delivered two more decisions, “ Anbieten interaktiver Hilfe” 2005 [GRUR] 141, and “ Rentabilitätsermittlung” 2005 [GRUR] 143, which show the evolution of the thinking of the Courts of Europe’s largest economy.

 

Claims to Computer devices/systems inherently have technical character

In both of these decisions, the BGH confirmed that, as in its previous decisions, claim categories make a difference - computer devices/systems per se do have a technical character. The question posed was whether method claims which effectively claimed the same invention in method (program) terms could/should be treated differently than corresponding device claims. The BGH confirmed this on the basis of the wording of section 1 of the German Patents Act (which follows the European Patent Convention, and ought therefore to be the same all over Europe). Section 1 specifically excludes programs (i.e. methods) for data processing, but not data processing systems.

On the other hand, method claims need closer examination – method claims are patentable (i.e. not excluded) only if they solve a “concrete technical problem”.

The practical effect is that if a software invention is claimed in terms of apparatus features, an examination of whether the claimed invention has “technical character” (i.e. falls foul of the statutory rejection under section 1) is no longer necessary. Instead, examination can turn directly to the question of whether the claimed invention is novel and based on an inventive step. On the other hand, if the software invention is claimed in terms of method features, then examination should normally begin with the statutory question of technical character, followed by an examination of novelty/inventive step.

 

Comment

The German Patent Court still appears to have difficulties in applying these principles. The Patent Court delivered its follow-up decision of the BGH decision “Signalfolge” (reported in Patent issues Winter 2004) and allowed the utility model application (BPatG 5 W (pat) 11/01). However, in doing so, the Court considered whether the claimed device had a technical character, whereas it could have allowed the application merely because the claims related to a device (in any case a requirement for utility model protection).

Clearing the statutory rejection is not the end of the story. In establishing whether an invention has inventive step, the Patent Office will assess whether the distinguishing features of the invention have a technical character. Thus, a non-obvious hardware claim (which inherently passes the statutory subject matter bar) will be examined for technical character, and may be rejected where the novel features are non-technical.