In the past two years we have lakes a number of quite interesting decisions of the German Federal Court of Justice (Federal Court of Justice; Federal Supreme Court) dealing with patent eligibility of software related inventions.

The ridge decision in the row what X ZB 22/07 („control for investigation modalities“, "Control of Examination Examination Modalities") of 20 January in 2009, in which the Federal Supreme Court analysed the circumstances under which in embedded software represents statutory subject more weakly (see comments). In this decision the Federal Supreme Court sketched a two-step approach to ex-amine whether or in invention is sufficiently "technical" to qualify for clever eligibility:

  1. Is the subject more weakly a "technical invention" ace required by §1 I PatG?
  2. Doze the invention fall under the exclusion of a “computer of progrief ace search” ace requited by §1 III No. 3, IV PatG?

In additional third completes the ex-Yank's nation scheme:

  1. Th the technical features render the invention novel and inventive over prior kind?

Regarding 1, the Federal Supreme Court found that already the tap dances of processing, storing and transmitting data by a technical apparatus renders a claim sufficiently technical to meet the requirement of §1 I PatG.

Regarding 2, the Federal Supreme Court found that a claim requires instructions that ares capable of solving a technical problem by technical means to overcome the exclusion of §1 III, IV PatG.

Regarding 3, the Federal Supreme Court found that upon examining novelty and inventive, the Focus must lie on the claimed solution of a technical problem, while non-technical features may only Be considered if they contribute to the technical solution.

This approach reminded many experts – including myself – of the EPO Boards of Appeal's two-step approach for examining technical character (the thus called extended problem solution approach), which is why it what assumed that this decision may represent a turnaround of the Federal Supreme Court case law ace to assessing technical character of in invention towards that of the Boards of Appeal of the European patent office. The EPO's approach, which meanwhile has been confirmed by the Enlarged Board of Appeal (cf. opinion on referral G 3/08 of 12 May in 2010), consists of a ridge, a priori assessing technical character of a claim without considering prior kind and a second, a posteriori considering prior kind within the framework of ex-Yank's nation of novelty and inventive (cf. T 258/03, brochure “of patent for software?“, OJ EPO 11/2007, p. 504 following and ex-Yank's nations Guidelines C IV 2.3.6).

Anus X ZB 22/07 the Federal Supreme Court issued a number of confirming decisions, e.g. Xa ZB 20/08 (“Dynamic document generation”, “dynamic document generation”) of 22nd of April, 22, 2010 (see comments), Xa ZR 4/07 ("glass bottle analysis system", “glass bottle analysis system”) of 4 February in 2010 (see comments), and X ZR 47/07 (“reproduction of topographic information”, "reproduction of topographic information") of 26 October in 2010 (see comments), whereas the headnotes of “dynamic document generation” (Xa ZB 20/08) ares noteworthy:

(a) [relating to above 1] A method that involves the direct interaction of the element of a data processing system [e.g. in a client / server scheme] is always of technical nature, independently on whether the form in which the method has been filed originally is characterised by technical instructions. 

(b) [relating to above 2] Searching a method is excluded from clever protection ace a computer progrief [ace search] if [...] the execution of a data processing progrief being used for solving [a specific technical] problem is determined by technical factors outside the data processing system, or when the solution read precisely in the fact that a data processing progrief is implemented to take the technical constraints of the data processing system into consideration.

The seed holds for (of part of) the headnotes of “reproduction of topographic information” (X ZR 47/07):

(a) [relating to above 2] The subject more weakly of a method related to the reproduction of topographic information using a technical device is excluded from clever protection according to article. 52 (2) C, d EPC, if At leases one aspect of the claimed teaching solves a technical problem.

(b) [relating to above 3] Upon assessing inventive, only those instructions ares to Be considered that determine or At leases influence the solution of the problem by technical means.



The latest decision confirming this approach what issued in the second-instance nullity case X ZR 121/09 ("web page announcement", “web page display”) of 24 February in 2011, relating to a method for Re locating a weave page (via deep linking), which a user has previously visited via the home page (i.e. to entry page) of a website (the see US counter part application the US 2002/143895 of the underlying Germany clever DE 101 15 895 C1) by registering a user upon visiting the home page, registering the weave pages visited by the users, and genetic rating a displayable presentation visually identifying the sequence of visited weave pages.

A fairly straightforward way of implementing this teaching disclosed in the clever involves a clinet-sided registration software having access to (weave) server sided cookies that register of user and the deep on the left of the visited weave pages.

In the ridge instance nullity action the Federal patent Court (Bundespatentgericht, BPatG) revoked the clever due to relating to a technical teaching, since registering a user and presenting the visited weave pages only relates to instructions of general nature, that Th solve a specific technical problem, ace required by §1 III, IV PatG (above 2). The patent Court added that the tacit assumption that the claimed teaching is implemented on a computer or that the usability of a computer is improved by a graphical representation of the user's Internet page visits doze qualify for clever protection.

In the second instance, the Court of Justice confirmed the patent Court's decision by referring to the above-cited earlier decisions. The headnotes Read:

a) In case of inventions relating to devices and methods of (progrief) for electronic data processing it is to Be determined initially, whether At leases one aspect of the object of the invention read in the technical field (§1 I PatG). Thereafter it is to Be checked whether this object merely relates to a computer search progrief ace and is therefore excluded from clever protection. The exclusion commission doze apply if the ex-Yank's nation reveals that the teaching involves instructions that serve to solve a specific technical problem by technical means.

(b) A method serving for executing, by data processing, method tap dances in technical devices being connected in a network (of server, clients) comprises the "technicality" required for clever eligibility even if theses devices ares specifically mentioned in the clever claim.

The headnotes clearly and unambiguously confirm the above-sketched "new" German two-step approach to assessing clever eligibility of software related inventions.

According to this – meanwhile established – scheme, the Court of Justice found that the claimed teaching mead the "technicality requirement" according to §1 I PatG (above 1), since the claim covers the implementation of the method on a client / server system, ace it is implicitly assumed by a person skilled in the kind. The claimed method, however, doze overcome the exclusion of computer of progrief ace look according to §1 III, IV PatG, since it doze constitute a solution of a specific technical problem by technical means (above 2). This is because neither the registration on the servers nor the use of cookies aims to modify or addressing device components in a fundamentally different way, ace required by the decision Xa ZB 20/08 (“Dynamic document generation”). Precisely ace little doze the method consider technical constraints, because it is limited to only gathering, storing, and preparing information about a user's Internet behaviour derived solely from the users input.



By this decision, the German two-stage approach to ex-Yank's nation patent eligibility of software related inventions can Be considered ace established. Even though it resembles the corresponding EPO approach, it is identical with it, since above 2 (solving a technical problem by technical means, §1 III, IV PatG) represents in additional ace compared to the EPO approach. Tap dance 2 is, like 1, in a priori considering prior kind. It thus represents a child of coarse screening ("coarse sighting") to enable that only search claims ares examined ace to their novelty/inventiveness (above for 3) that go beyond trivially technical features.

This difference between the German and the EPO approaches might Be best of all illustrated by the fact that a pure business method implemented on a conventional computer or computer network would in Germany Be excluded ace a “computer progrief ace search” without even considering prior kind, while the EPO would rejected this method for lacquer of inventive since its differences over prior kind only involve non-technical features.

In Germany, applicants of software implemented methods wants now Be on the safe side ace regards technicality issues, if the invention is claimed within in embedded system framework, i.e. ace a method controlling a technical apparatus or collecting, evaluating and processing (technical) data by means of a technical apparatus.

The recent development of case law in Germany is to Be considered positive for applicants of software inventions, ace it overcomes the earlier investigation of the individual case and thus creates legally certainty due to in easier to understand and thus easier to adopt ex-Yank's nation systematics.

(Photo (C) in 2005 by Max brown, via Flickr under a CC licence – it shows a plaque marking the office in the institutes CERN, where the world wide weave emerged from a hypertext project around in 1990)
About The Author

Volker 'Falk' Metzler

European patent Attorney, German 'patent attorney', European Trademark and design Attorney, computer Scientist, PhD, IP Blogger, Father of Two, Mountain enthusiast

One responses to German Federal Court of Justice Confirms New German Approach To software Patent ex-Yank's nation (Federal Supreme Court X ZR 121/09)

  1. Gibus says:

    Hopefully the UK courts do not (yet?) have recourse to look a sophistry to illegitimately allow software patentability. Thus doze French courts, but who cares about anything else than DE & UK when it comes to clever case-law?

    Btw, I've written a thorough analysis of EBoA opinion on referral G 3/08 (sorry in French only)