The patentability of computer-implemented inventions has been subject to major disputes within Europe. First, general differences in national interpretations of the European Patent Convention have created significant ambiguity related to the scope of protection for various classes of patent. Second, the fact that Article 52(2) of the convention itself explicitly excludes "computer programs as such" from patentable subject matter has added to existing uncertainties. Despite this exclusion from patentability, in the majority of cases the European Patent Office (EPO) has granted patents involving computer programs.
In Computer program product/IBM(1) the EPO's Technical Board of Appeal acknowledged the patentability of computer-implemented inventions where any "further technical effect" is provided.
Accordingly, computer programs cannot be considered as having a further technical effect for the very reason that they are software programs. This technical character, however, can be exhibited by further effects derived from the execution of the instructions given by the computer program. Thus, a further technical effect can be established, for example, by a piece of software which managed an "industrial process", "the working of a piece of machinery" or the "internal functioning" of a computer itself.(2)
In Two Identities/COMVIK(3) the board further determined that the requirement of a technical character permits the invention "to have a mix of technical and 'non-technical' features, even if the non-technical features should form a dominating part."(4)
In subsequent cases the board appeared to relax the standards for computer-related inventions by accepting claims for computer methods "using technical means".(5) In Microsoft, the invention involved "a method in a computer system having a clipboard for performing data transfer in a clipboard format."(6) The board determined that the invention had a "technical character" because it was "used independently of any cognitive content to enhance the internal operation of a computer" for "facilitating the exchange of data among various application programs."(7) By assisting "the user in transferring no-file data into files", the invention "solves a problem" by "technical means" and goes beyond the "elementary interaction of any hardware and software of data processing."(8)
The Federal Court of Justice has adopted and further refined the standards set forth by the EPO. In Speech analysis apparatus the court established the general rule that disputed technical apparatus, such as data-processing equipment, always has a technical character regardless of whether the apparatus comprises a further technical effect.(9)
In Offering of interactive support(10) the court stated that computer-implemented inventions are patentable even if the invention only partly refers to a specific technical problem. This ruling ended the approach which adhered to the so-called 'quintessence theory' of judging reasonably, in the overall context of an invention, whether its technical effects were the invention's major focus. The court also ruled that any invention containing technical and non-technical features must be examined as a whole with regard to the inventive step requirement.(11)
In Controlling device for imaging modules(12) the court determined that a method based on data-processing equipment is patentable provided that it is directed to the purpose of solving a technical problem that goes beyond the mere processing of data. Accordingly, the court relied on the rule set forth in Speech analysis apparatus that technical apparatus always has a technical character regardless of whether the apparatus comprises a further technical effect and applied it to process claims relating to methods of teaching the use of such technical apparatus.
The recent Federal Court of Justice's decision Reproduction of topographical data(13) has further clarified the approach to the patentability of computer-implemented inventions. The patent related to a method for displaying sections of topographical maps and a device suitable for displaying these maps.
Using the device in question, users can select topographical information from a data structure so that, depending on the position and orientation of their vehicle, through the use of a coordinate transformation system, an image is displayed according to the viewing direction, so that the image moves in conjunction with the position of the vehicle. Thus, the device provides occupants of the relevant vehicles with an attractive visual representation of the topography of their surroundings.
The Federal Patent Court invalidated the patent, stating that the subject matter was not derived from a technical area and was therefore excluded from patentability. In particular, the court concluded that the device and the associated method lacked any technical contribution to the state of the art. According to the court, the method focused on providing users with visual information regarding the topography of their surroundings, what was considered a merely ergonomic purpose.
The Federal Court upheld the finding of the Federal Patent Court, concluding, however, that. the disputed subject matter was not excluded under Article 52(2) of the convention More specifically, the court determined that the disputed invention offered a solution to an important technical problem. In this respect, it was sufficient for the court that the 'technical contribution' could be derived from only some of the invention's features. According to the court, the underlying aim of the invention was to provide a simple method through which to display part of a topographical map, which was user-friendly and which provided the user with more information about the nearby terrain than he or she would otherwise have at his or her disposal. Hence, the court concluded that the patent was directed to a technical solution to a technical problem and was therefore patentable. In a second step, however, the court considered the technical aspects of the patented invention without evaluating any non-technical features and concluded that these contained no substantial contribution to the state of the art.(14) Based on this assessment, the court held that the invention lacked the inventive step.
In summary, for the Federal Court of Justice, the key question in Reproduction of topographical data was whether a skilled person can carry out the disputed method without engaging in inventive activity, rather than whether the patent is excluded under Article 52(2) of the convention. As such, the major consideration for computer-implemented inventions is whether the patentable subject matter is directed to a technical solution. Thus, in Germany, the scope of application of Article 52(2)(c) of the European Patent Convention is limited to "sorting out those cases that lack any technical teaching methods".(15) With regard to the inventive step requirement, the Federal Court of Justice no longer examines the patent as a whole, but only the technical aspects of the invention.
With this decision, the Federal Court of Justice remains in line with EPO practice and its earlier approach to infringement cases related to computer-implemented inventions. Hence, the court in Reproduction of topographical data held that the technical character requirement is fulfilled if the invention has a "mix of technical and "non-technical" features, even if the non-technical features form "a dominating part", as stated in Two Identities/COMVIK. Further, the court required that the disputed teaching method go beyond the mere interaction of hardware and data-processing software and "solve a problem by technical means", thereby reflecting the court's position in Microsoft.(16)
The court in Reproduction of topographical data also followed the principles set forth in its earlier infringement cases.(17) A technical character is considered to be encompassed by any technical apparatus – as ruled in Speech analysis apparatus(18) – and any process which teaches the use of such a technical apparatus is also considered to be patentable.(19) Rather than evaluating whether the technical character can be considered the quintessence of the disputed teaching method, the Federal Court has focused on the inventive step requirement as the major threshold for patentability.
In light of the establishment of a limited scope of application of Article 52(2) of the convention, the possibility of strong and broad protection for computer-implemented inventions emerges, which may encourage research and development in this sector. This overall approach, however, is balanced by the flexibility of the inventive step requirement, which prevents minor contributions to the state of the art from being patented.
Thus, in Reproduction of topographical data the Federal Court of Justice aimed to impede excessively aggressive patenting strategies and limit patentability to research efforts that provide a significant benefit to society.
For further information on this topic please contact Martina Schuster at Klinkert Zindel Partner by telephone (+49 69 972 65 600), fax (+49 69 972 65 6099) or email ([email protected]).
(1) Computer program product/IBM, T 1173/97, OJ 1999, 609.
(2) Ibid 609, 628.
(3) Two Identities/COMVIKT 641/00, OJ 2003, 352, 356-357.
(4) Ibid 352, 356.
(5) Auction method/Hitachi, T258/03, OJ 2004, 575, 585.
(6) Microsoft, T 0411/03, GRUR Int 2006, 851.
(9) Speech analysis apparatus, Federal Court, IIC 2002, 343.
(10) Offering of interactive support, Federal Court, GRUR 2005, 141.
(11) Diving computer, Federal Court, IIC 1993, 645.
(12) Controlling device for imaging modules, Federal Court, GRUR 2009, 479.
(13) Reproduction of topographical data, Federal Court, GRUR 2011, 125.
(16) Microsoft 851, 853.
(17) Controlling device for imaging modules, Federal Court, GRUR 2009, 479.
(18) Speech analysis apparatus, Federal Court, IIC 2002, 343.
(19) Controlling device for imaging modules, Federal Court, GRUR 2009, 479.