German Supreme Court widens the door for software patents

The German Supreme Court (BGH) in its recent Siemens application decision[1]will give software patent critics new ammunition to oppose IPRs for software patents. The decision regarding computer-implemented inventions seems to tear down all common (German) barriers for software patents. From the critics point of view it further monopolizes software and computer products. However the decision just settles the long-lasting dispute between the European Patent Office (EPO) and the German Supreme Court about the specific conditions of patentability of software thus leading to more predictability and certainty.

Up to now, the German Patent Office (DPMA) as well as the German Patent Court (BPatG) and the German Supreme Court (BGH) have been very cautious allowing patent protection for software patents. With respect to Article 52(2) under b EPC, and, of course, the corresponding Article 1(3) of the German Patent Act (PatG), the patentability of software was strictly limited by the technical nature of the whole invention. In a nutshell, computer programs were only patentable, if they have a (characterizing) technical function within the invention, i.e. the software programs must induce a technical effect outside the computer on which they are executed. Although this principle appears very straight, its application by the German Patent Office, the German Patent Court and the German Supreme Court resulted in a very confusing case-by-case assessment of the patentability of computer-implemented inventions. Many unexpected turns led to a situation in which even experts could not predict with sufficient certainty whether a computer implemented invention has a technical character and would pass the examination through the patent application process and the potentially following sequence of appeal before the German Patent Court and the German Supreme Court.

The practice of the European Patent Office (EPO) differs significantly. According to the Guidelines for Examination in the European Patent Office, Part C, Chapter IV, 2.3.6, computer implemented inventions must also have a technical nature. But contrary to the former German legal situation, this requirement was interpreted more loose. To meet the requirement of a technical nature it is sufficient that technical considerations led to the particular implementation of the invention in a software-hardware system. As a result, it was possible to get a patent for a computer-implemented invention via an application before the European Patent Office that never would be granted by the German Patent Office. So no surprise that the validity of those patents was highly contested before the German Patent Court and the German Supreme Court.

This divergence from EPO practice was undesirable and the German Supreme Court does now away with this. According to the recent decision the whole technical nature of a computer-implemented invention is no longer crucial for the patentability. It is sufficient that “the execution of a software program which implements the technical solution is specified by technical facts outside the computer on which it is executed or that the solution is precisely that the software is so implemented, that it orientates to the technical specification of the computer.” Therewith the presupposition of technical nature of the computer-implemented invention is actually put away. Considering the former (German) legal discussion on the presupposition of technical nature, the decision is really groundbreaking, yet its impact on the examination during the patent application process will be limited.

The main criticism of the new doctrine concerns the second clause of the sentence since any programmer regularly designs his programs to the particular computers for which the program is written. Taken in the literal sense of the words the new doctrine would therefore lead to an unlimited widening of patentability of computer programs. Admittedly, there is a potential wideness and abstractness of computer programs that could lead to an adverse effect to technical innovation, if there are no reasonable restrictions to the patentability of computer programs. But those restrictions should be the same as to common inventions: First, the computer implemented invention must be new and a result of an inventive step. There is no place for weak patents which only cover pseudo inventions. Second, the claims shall be reasonably restricted to a clear problem and its tangible solution. There is also no place for merely abstract descriptions and conceptual considerations of a general difficulty. Considering this, the German Supreme Court has acknowledged the problem of abstractness of the claim in question, and the Court expressively orders the former instance to take it also into consideration during the examination of the presuppositions novelty and inventive step.

In principle, it is a good thing that the presuppositions of novelty and inventive step are thus re-established and strengthened within the examination of patentability of computer-implemented inventions. The well-known interpretation of these categories allows a more precise evaluation of what is really patent-worthy than an obscure concept of technical nature which is hardly understandable even for patent professionals.

Stephan Dorn

[1] the patent relates to a process where, in the context of the patent application, structured documents (here in particular HTML or XML documents) are dynamically generated on a host computer which communicates with a client and is preferably configured in an “embedded system” architecture. Requirement data from the client is received at the host computer and request parameters are extracted there from. The request parameters are mapped by a control module onto a command set of an architecture-specific interface module of the host computer. The structured document is then generated dynamically, using at least one template document which contains service takers. The service takers are executed in a runtime environment of the interface module, with reference to the mapped request parameters, and define contents or structure of the structured document after they have been executed. The dynamically generated structured document is then transferred to the client, see for full analysis in English,