Since the German Supreme Court handed down its recent decisions on the patentability of computer implemented inventions (see Computer Program Inventions before the German Supreme Court – A Brief Summary), the Patent court got off to a good start with a reasonably straightforward application of the Logikverification decision, and held that certain development methods and tools were patentable, even if implemented as software, as far as they may be used in the process of producing a technical product (“Computerimplementiertes Verfahren zum Herstellen eines Kabelbaumes“, Mitt 2002, 529). But shortly thereafter, the Patent Court was faced with one of the cases the BGH had referred back to it, and very soon the Court found itself faced with a string of difficult cases in which its old prejudices against patentablity of software inventions have resurfaced and a new referral to the Supreme Court is needed to sort out the mess.
Here we look at five such cases before the Patent Court.
1) Suche fehlerhafter Zeichenketten (GRUR 2002, 871)
This was the case the BGH had referred back to the Patent Court (see above).
As indicated above, the invention was concerned with the identification of mistyped words in a digitally stored text. The identification was performed by modifying correct words so as to generate erroneous words likely to occur as the result of typos. Mistyped words could then be identified by comparing the frequency of correct words with that of the corresponding modified words in the text. In comparison to prior art spelling tools, the invention did away with the need for word libraries requiring large memories, thereby improving the use of available memory. Also, the invention was applicable to text of any language.
Although the Patent Court accepted the existence of a technical problem, it found this to be only an indication but no proof of technical character. This was because the technical advantages of the invention (reduction of memory usage, applicability to different languages) were brought about by the chosen non-technical “behaviour”. Otherwise, any computer implementation had to be regarded as technical, since “any alternative method when implemented has different characteristics and proves to reduce computing time or save memory”. Therefore, the Patent Court found the invention to lack technicality.
This decision is questionable. Although the Court accepted that the invention solved a technical problem, it denied its technical character. This does not only appear inconsistent in itself but also at odds with the above BGH decisions and EPO practice which set out that the solution of a technical problem, or even more broadly, “technical considerations”, is sufficient to establish technicality.
The question arises as to when a technical problem is “good enough” to render an invention technical. Apparently, saving memory or reducing computing time is not (but note that the EPO Guidelines for Examination indicate that a computer program which affects the efficiency or the management of computer resources may be regarded as having a technical character). Further, the undifferentiated statement that any computer-implemented method had such effect seems untenable.
2) Fuzzy Clustering (GRUR 2003, 139)
The patent application at issue related to a computer-based classification method using fuzzy clustering. The application had been refused by the Patent Office.
In the appeal proceedings, the applicant presented four differently worded versions of claim 1. Each of them was rejected by the Patent Court for relating to non-technical subject-matter.
Claim 1 of the main, first and second requests related to a method of a computer-based classification of system-imminent states of a dynamically changing technical system using fuzzy clustering, in particular relating to the classification of a traffic flow. The Court stated that despite the reference to a technical system, the claimed teaching was based on a mathematical method (fuzzy clustering) and was therefore non-technical. In contrast to the invention of the BGH decision Suche fehlerhafter Zeichenketten, claim 1 did not “serve the solution of a concrete technical problem“. Referring to the BGH decision Logikverifikation, the classification was achieved mathematically only and did not require the consideration of any technical factors.
Claim 1 of the third auxiliary request differed from claim 1 of the main request in that the method measured system-imminent states of a dynamically changing technical system and generated measurement data. The applicant submitted that the method thus processed measurement data and should be allowable in accordance with the 1992 BGH decision Tauchcomputer (GRUR 1992, 430, in which the BGH had allowed a device for measuring, processing and indicating diving parameters). The Court disagreed and stated that claim 1 at issue was directed to a method, whereas the claims of Tauchcomputer were device claims. However, the Court saw a significant difference to Tauchcomputer, in that the claimed method did not generate results that could be used in any technical way. Instead, the method merely recited a mathematical method which could be applied to measurement data. The Court indicated that the claim could have been allowable had it recited a certain rule indicative of a measurement result (e.g. detection of a traffic jam, free traffic flow etc.).
The main claim in each of the various requests was a method claim, and each request contained a sub-claim directed to device comprising a processing unit adapted to perform the method steps of the main claim. The device claim was not commented upon by the Patent Court, because the method claims upon which it depended were rejected. Had the device claim been rewritten as an independent claim, it could possibly have been found allowable, as indicated by the Patent Court when referring to the BGH decision “Tauchcomputer”. Certainly, the Patent Court would have had to take into account the finding of the BGH in “Sprachanalyseeinrichtung”, in which data processing systems were generally found to have a technical character.
3) Rechnergestützte Sprachanalyse (Mitt 2003, 207)
This case related to a method of analysing speech by allocating possible syntaxes using predetermined probabilities. The application had been refused by the Patent Office for lack of technical character.
The Patent Court agreed and found that the speech analysis was performed using grammatical rules and was therefore not based on technical considerations. In particular, the main instructions of claim 1 were the allocation of probabilities to alternative syntactic structures using linguistic rather than technical considerations.
The Court also rejected an amended claim which recited that the speech analysis employed a stack. The applicant had argued that a stack was a structural limitation and - referring to the BGH decision Sprachanalyseeinrichtung - therefore rendered the claim technical. The Court questioned this argument and stated that even if the feature was a structural limitation, it was only mentioned in the claim “in passing” and could not render it technical.
Referring to the BGH case Suche fehlerhafter Zeichenketten, the Patent Court found that the invention neither solved a problem in a conventional technical field, nor did it have any technical peculiarity justifying patent protection.
All claims considered in this case were method claims. The Patent Court rightly found that reference to a stack in a method claim did not make the claim a product claim. However, in view of the BGH decision “Sprachanalyseeinrichtung”, it seems that the Patent Court would have had to decide differently if the applicant had claimed a data processing system for performing the method, instead of the method itself.
Further, as in most of these decisions of the Patent Court, the “peculiarity”-criterion was re-iterated without clarifying or questioning its meaning or relevance.
4) Transaktion im elektronischen Zahlungsverkehr (GRUR 2003, 1033)
The application at issue related to a method of performing a transaction in an internet payment system. The method comprised the steps of generating first and second keys, transmitting the first key from a vendor computer to a central server via a client computer and an internet banking facility, transmitting a second key from the vendor computer directly to the central server, comparing the first and second keys at the central server, and generating a confirmation signal and proceeding with the transaction if the first and second keys were identical.
In appeal instance, the Patent Court stated that by generating first and second keys and comparing the keys using a “neutral” server, the security of internet transactions could be improved. However, this was not achieved by technical means, for example a special form of data transmission or encryption, but by a “business model” determining the sequence of steps and involving a “neutral” server. However, this was already known to be practised when completing manual transactions. Accordingly, the invention was based on a business model and did not solve a technical problem.
Referring to the BGH decision Suche fehlerhafter Zeichenketten, the Court stated that an invention was not technical merely because it required the use of a computer. Instead, the invention had to solve a “concrete” technical problem in a conventional technical field (or otherwise have some degree of peculiarity). The general aim of providing secure electronic transactions could not be regarded as such a “concrete” technical problem. However, it admitted the applicant’s argument that further clarification of the meaning of the term “concrete technical problem” was necessary and granted leave to appeal to the BGH.
Although the Patent Court did not appear to have any difficulty in applying the “peculiarity”-criterion of “Suche fehlerhafter Zeichenketten”(and denying any such peculiarity), it exposed another problem arising from this BGH decision, that is to decide when a sufficiently concrete and technical problem was solved.
Also, the decision is at odds with an earlier Patent Court decision relating to similar subject-matter (“Elektronischer Zahlungsverkehr”, GRUR 2002, 791), in which the improvement of security in electronic transaction systems was held to solve a technical problem.
5) Bedienhandlungen (Mitt 2003, 555)
This case related to a client-server system for handling electronic sales and transactions. The invention resided in a method of monitoring user interactions and providing interactive help to the user if a user interaction indicates that a purchase is unlikely. The application had been rejected by the Patent Office for lack of inventive step.
The Patent Court in appeal instance rejected the application for lack of technical character. The applicant had argued that the claimed method was technical because it increased the number of successful purchase operations, thus solving a technical problem. The Patent Court disagreed and found that this was not a technical but a commercial problem.
The applicant further argued that the invention, by increasing the number of successful purchase orders, had a peculiarity justifying patent protection, as set out by the BGH in Suche fehlerhafter Zeichenketten. The Patent Court rejected this argument and stated that the required peculiarity had to relate to the solution of a technical problem. However, it accepted that the term “peculiarity” was open to interpretation and therefore granted leave to appeal to the BGH.
This case confirms that the BGH’s “peculiarity” criterion has created confusion. The Patent Court indicated that a certain degree of “peculiarity” of an invention justified patentability if it accorded with the intended purpose of patent protection. The intended purpose of patent protection was to advance solutions to technical problems. Does this mean that “peculiarity” is akin to “technicality”, as suggested above? At least, the Patent Court has realised that clarification is required. This case puts the ball back in the BGH’s court.
We have seen that the BGH has re-interpreted the established meaning of “technicality” and appears to have taken a more flexible approach. The presence of "technical considerations" has been established as a suitable criterion to decide whether or not an invention is technical. Data processing system claims have been found generally to be of a technical nature. The allowability of "Beauregard"-claims has been confirmed.
However, new questions arise. Why has a distinction been made between “conventional” and “non-conventional” technical fields, and how can this distinction be made in practice? What is the relevance and meaning of “peculiarity” to justify patent protection? When is a technical problem sufficiently “concrete”?
The Patent Court appears to have struggled to apply some of these new criteria before realising that further clarification is necessary. As the Patent Court has given leave to appeal in two cases, the BGH will have the opportunity to revisit some of the issues it has raised. Patent practitioners will hope that a common sense approach in line with the EPO is adopted.