• Patentability of Software Invention

    In our Spring 2004 edition of this newsletter, we provided an analysis of various German Patent Court decisions on the patentability of computer implemented inventions. In one of the cases (Transaktion im elektronischen Zahlungsverkehr, GRUR 2003, 1033) leave to appeal to the BGH was granted. The BGH has now delivered its decision (Elektronischer Zahlungsverkehr, Mitteilungen 2004, page 356.) The BGH’s reasoning contains some interesting remarks regarding the question of whether only technical features are relevant for novelty and inventive step.

    The case related to a method of performing a transaction between a vendor and a buyer in an Internet payment system. The invention resided in an idea to include an “electronic banking” step in order to obtain an approval signal from a “neutral” server before concluding a transaction. The purpose was to improve security.

    In appeal instance, the Patent Court confirmed the Patent Office’s refusal of the application on the ground that the claimed subject-matter was not a technical invention in accordance with Section 1(1) of the German Patents Act. This was because the claimed method was primarily an implementation of a business payment method rather than a technical teaching.

    The BGH disagreed and found that the Patent Court had confused the provision of Section 1(1) of the Patents Act (from which the general requirement of technicality for patentablity can be derived) with the exclusion of business methods and computer programs from patentability (Section 1(2) no. 3).

    Referring the case back to the Patent Court, the BGH hinted that it considered the invention to employ technical means (electronic banking) to solve a technical problem (secure transmission of sensitive transaction data).

    In addition, the BGH remarked that when considering the question of technicality, it was irrelevant whether or not the features which could confer technicality to an invention were known. Thus, even if “electronic banking” per se was known, it could be sufficient to render an invention technical.

    Further, the BGH explained that the Patent Court’s decision resulted from a misunderstanding of an earlier BGH decision (Suche fehlerhafter Zeichenketten, GRUR 2002, 143, see our Spring 2004 edition of Patent issues). In that decision, the BGH had stated that for an invention to be patentable, its “dominant” features had to solve a concrete technical problem. The Patent Court had found the electronic banking feature was known and therefore “non-dominant” and, as a consequence, did not take it into account for its assessment of technicality. The BGH stated that the distinction between “dominant” and other features was meant to refer to the question of inventive step. In other words, only the technical teaching of a claim was relevant for inventive step.

     

    Comment

    The Patent Court decision was the result of the vague statements made in the earlier BGH decision Suche fehlerhafter Zeichenketten. In effect, the BGH has now held that when considering patentability: 1) all (non-trivial) features of an invention are to be considered when assessing technicality, and 2) only (non-trivial) technical features are to be considered when assessing inventive step. It remains to be seen whether future decisions will deliver clearer guidance on how to weight the features of an invention in order to distinguish “non-trivial” features from those which only serve to disguise a non-technical invention as something technical.

    In a recent decision (Preisgünstigste Telefonverbindung, Mitteilungen 2004, page 363), the Patent Court has confirmed that only technical features are relevant for inventive step. In doing so, it referred to two more recent decisions from the EPO (T641/00 COMVIC and T 258/97 FRANCE TELECOM), in which the Technical Board of Appeal held that only those features of a claim which provided a technical effect were relevant to inventive step. Leave to appeal was granted, giving the BGH the opportunity for further clarification.

    These cases bring German practice into line with the approach now favoured by the EPO - a welcome development.