The X. Civil Senate of the Federal Court of Justice rejected an appeal against a decision of the Federal Patent Court in a patent nullity suit regarding the patentability of a software invention relating to the display of web pages.

The German patent in dispute (DE 101 15 895) comprised a method for generating a presentation for re-locating a web page that has already been accessed from a home page of an information provider, and which has been closed in the meantime. The invention was said to solve the problem where a person cannot find or reopen an internet page that has been closed. The "back" button and the address list provided by most Internet browsers were identified to be only partially suited for re-locating an Internet page that has previously been accessed.

The Federal Patent Court had nullified the patent in dispute due to the non-patentability of software inventions which do not solve a concrete technical problem by technical means.

The Federal Court of Justice rejected the appeal against this decision and confirmed the nullity of the patent. The court held that, in principle, the patentability respectively nonpatentability of software inventions has to be examined in a twofold test:

Firstly, according to Article 1(1) of the German Patent Act, it has to be verified that the invention is based on a field of technology. Therefore, at least part of the invention must solve a technical problem. The court determined that the invention in dispute included the processing, storage and transmission of data by using technical network devices and that the invention was therefore based on a sufficient technical background.

Secondly, the court confirmed that all software inventions have to solve a concrete technical problem by technical means to overcome the non-patentability of programs for data processing devices "as such" stipulated at Article 1(3) No.3, (4) of the German Patent Act. According to the court this precondition of patentability is in line with Article 27(1) of the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). The court then came to the conclusion that the invention in dispute did not solve a specific technical problem by technical means and was therefore not patentable. In particular the software invention did not include any technical modifications of the affected device components.

Furthermore, the solution provided by the software invention was not specifically based on the technical situation of the affected data processing devices. Finally, the court argued that the invention was only related to the registration and storage of information data and not to solve a concrete technical problem. The software invention was therefore regarded to be not patentable and the appeal against the judgment of the Federal Patent Court was rejected.

This new decision forms part of a recent series of important decisions provided by the Federal Court of Justice regarding the question of patentability or non-patentability of software inventions.1 With these decisions the Federal Court of Justice has provided further important guidelines regarding the patentability of software inventions. It is now up to the German Patent and Trademark Office and the Federal Patent Court to apply these guidelines when examining the patentability of software related patent applications and patents.