Software-Related Patents:
Germany
copyright 1997 Donald M. Cameron , Aird & Berlis
Contents
Statutes
Section 1 of the German Patent Act corresponds to subsections 1 to 3 of Article 52 of the EPC . In 1981 the Patent Act was amended to contain a provision prohibiting patentability of computer programs "as such".
In Germany, only "technical" inventions can be patented. In order to be technical, there must be a teaching of planned activity using controllable natural forces for achieving a causally assessable success which is the direct consequence of using controllable natural forces without the interposition of human mental activity.
Regulations
The German Patent Office has issued guidelines regarding software-related inventions (2) however the German jurisprudence has become more liberal
with respect to the patentability of software related inventions and this liberalization
has been recognized by the Patent Office Examiners. The national German patent practice is
not fundamentally different from that of the EPO.
The following computer-related inventions are considered "technical" and
consequently patentable:
1) if they concern the functioning of the computer so that they enable the direct co-operation of its elements;
2) if they describe a certain structural form or improvement of a computer;
3) if they enable a computer to be used for purposes different than in the prior art,
4) if the program enables a computer having known structure and elements to be used in a new and inventive manner;
5) if natural forces are used and the computer program or algorithm are related to each other so intimately that a technical result is achieved without the interposition of human mental activity.
If the overall character of a program is technical and it serves a technical purpose,
in general, the program may be considered technical and therefore patentable. However, it
may not be possible to obtain patents for non-technical programs such as book-keeping
programs or office organization software.
Case Law
In the Disposition Program case (3) , the Federal
Supreme Court doubted whether computer programs were patentable because the essence of the
invention was unpatentable human intellectual activity. The approach taken by the Court
was that the essence of what was claimed as new and inventive must be extracted and that
element must be technical.
In Rolladen-Steuerung , the 19th Senate of the Federal Patent Court decided on
July 25, 1989 that the interaction of the program with the computer has a technical nature
if "For solving a technical problem, the data processing equipment is controlled by
the program in such a way that a technical result -- a technical effect that can be
causally recognized -- is attained. This technical result can, as the immediate
consequence, be caused solely by the control of the data processing equipment by the
program."
On October 4, 1990, the 19th Board of the Federal Patent Court decided in respect of a
temperature control device for a surface heating system, that the entirety of the
invention must be examined (analysing the invention as a whole) and that it was not
permissible to deny patentability on one feature of the invention alone. The Federal
Patents Court took the Disposition Program decision of the Federal Supreme Court as
meaning only that an algorithm "as such" is not patentable -- if an algorithm is
not determined by its purpose, it is not protectible. However, the mere presence of an
algorithm is not by itself sufficient to deny patentability.
The Page Buffer case (4) decided on June 11, 1991
represented a breakthrough for patent protection. In this decision, the Federal Supreme
Court accepted the technical nature of computer programs, essentially eliminating the
legacy of its decision in the Disposition Program case. The case involved an
invention related to a "side storage" method for capturing and storing data in
the current storage area as well as providing a loading strategy for a cache. The
invention was considered to be patentable because the functioning of the data processing
equipment was directly involved in the system thereby giving the invention a
"technical character." Because the functioning of data processing equipment was
concerned there was a technical character: it was thus a new, non-obvious structure of
hardware or a method of using hardware in a new, previously not customary or obvious way.
The Chinese Characters case (5) was decided on the same day. The Federal Supreme Court held that a method of inputting Chinese characters into a text processing system was not patentable. The Court held that the invention lacked a "technical character" and did not address the question of whether the program "as such" was patentable. The Court held that the essence of the invention was the arrangement of the Chinese characters by collecting and organizing the characters and their parts. The Court held that the arrangement of the characters constituted a system of mental steps and that there were no other technical processes besides the mental steps. Thus the invention was not proper subject matter.
In the Diving Computer case (6) the invention related to a program for use in decompression time calculations for scuba diving which made a calculation and automatically displayed the data gathered from measuring instruments. The Federal Supreme Court held that the automatic display did not require human intellectual activity and therefore could be considered to be "technical."
The Federal Supreme Court noted that the entirety of the means used for the automatic
display of the conditions had to be considered. The Court considered the entire teaching
of the claim to be technical and that the lower Court had wrongly limited its examination
to the difference between prior art and new features. Thus the Court examined the
invention "as a whole."
In the Flugkostenminimierung decision (7) , the Federal Supreme Court held that economic aspects were the predominant feature of the invention and therefore the "core" of the invention was non-technical. Although the term "core" was not explicitly mentioned, in these recent decisions, the Court emphasized the examination of the prominent features of the invention. Therefore, it appears that the Court now equates the core of the teaching with the patent claim's prominent features.
Endnotes
1. For more information see Jürgen Betten, " Patentability of Software in Europe: The German Perspective (Part I) " (August 1996) 13 The Computer Lawyer 1; and Jürgen Betten, " Patentability of Software in Europe: The German Perspective (Part II) " (September 1996) 13 The Computer Lawyer 16.
2. Blatt für PMZ, 1987; which was updated in Blatt für 1995.
3. GRUR 1977, 96 - Disposition-sprogramm.
4. EPO Journal 1993, 241 - Seitenpuffer (Page Buffer).
5. EPO Journal 1992, 798 - Chinesische Schriftzeichen.
6. GRUR 1992, 430 - Tauchcomputer.
7. GRUR 1986, 531.
Firms
R.A. Kuhnen & P.A. Wacker Patentwaltgesellschaft mbH
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