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Institute of legal issues of the open air and Open Source software

Bundespatentgericht explains VFAT patent once more for trifling

from: Stefan Labesius

Already at the beginning of December of the last year the Bundespatentgericht once more had decided EP 0 618 540 in Germany (BPatG, Urt on the continuance of the European patent. explains to v. 5th of December, 2013 – 2 Ni 9/12 (EP)) and the patent again for trifling. The invention protected by the patent describes a procedure or a system, long – i.e. from more than eleven places existing – to file name supported and, the claimed procedure or system should also be able to administer furthermore short file names, i.e. compatibly with such operating systems should be which can use only short file names for a file. Today the suitable procedures which Microsoft had implemented in the then new VFAT file system in the operating system Windows 95 around files whose name enclosed more than eight places to be able to discover above all still find in Smartphones use. Now the judgment reasons of the decision are given.

I. Prehistory

Already in 2006 the patent was explained for the first time by the BPatG because of missing inventive activity for trifling (Urt. v. 26th of October, 2006 – 2 Ni 2/05 (EU), cf. news of the week v. 5th of March, 2007). However, the decision at that time of the BPatG was lifted by the Federal Court of Justice and the nullity action was turned down (Federal Supreme Court, Urt. v. 20th of April, 2010 – X ZR 27/07, cf. in addition news of the week from the 3rd of May, 2010).

Against the erstinstanzlichen decision the Federal Supreme Court from view at that time affirmed the presentation of an inventive activity. Since for the expert it was not already obvious that the access to long file names with new succession operating systems is possible to MS-DOS, V. 5.0 with concurrent Abwärtskompatibilität with operating systems to MS-DOS including, V. 5.0 by the arrangement of a first one and the second list entry if a function occupied not yet up to now can be found in the file system structure FAT and be used for the setting the course between an access about the short or about the long file name (Federal Supreme Court, Urt. v. 20th of April, 2010 – X ZR 27/07, Rn. 49).

Rather it required – according to the Federal Supreme Court – the knowledge that the compatibility can be thereby realised if beside the list entry with the short file name, another or several other list entries are put on for the long file name and already in the file system structure FAT available, but yet occupied function is not used to be able to take access to a file with MS-DOS to V. 5.0 under a short file name and with the following new operating systems under the long file name. The Federal Supreme Court held this consideration, however, from view at that time for speculative because could not be certain yet whether the file system structure FAT contained generally such a function (cf. Federal Supreme Court, Urt. v. 20th of April, 2010 – X ZR 27/07, Rn. 45).

II. The latest gewgaw procedure

The recent refusal of the patent protection supports the BPatG now again on a missing inventive activity. For this succeeded the gewgaw plaintiff in presenting new state of the technology which had not been treated in the first gewgaw procedure apparently yet. Thus a Posting is decisive for the renewed gewgaw of the patent from the 24th of March, 1992 on the Usenet newsgroup to the treatment of list entry structures with short and long file names for the file management system of the Atari operating system GEMDOS.

The description there served already in 2012 in a procedure of Microsoft against Motorola before the U.S. Internationally Trade Commission (ITC) supported on the parallel U.S patent 5,758,352 ("Common name space for long and short filenames") as a conflicting state of the technology. In the Posting it is described in the essentials that for a file with long file name an enlarged list entry GEMDOS is provided which is built up from two standard GEMDOS-list entries. Then the long file name is split in an other step on both list entries.

However, with it is suggested – in view of the BPatG – the object of the patent claims of EP 0 618 540 with neglect by the signs which do not contribute to a technical problem solution by the state of the technology for the expert. Besides, the court the Federal Supreme Court follows the narrower judgement graduation, already for some years for the criterion of the inventive activity (cf. article. 56 EPÜ, §4 PatG) in connection with computer-related inventions lays. Then for the judgement of the inventive activity only such signs are to be considered which determine the solution of a technical problem which is mastered by at least one aspect of the apprenticeship to be protected with technical means or influence (Federal Supreme Court, judgment v. 26th of October, 2010 – X ZR 47/07 – reproduction of topographic information; cf. in addition: News of the week v. 23rd of February, 2013). In view of computer systems technical means are given, if

However, the BPatG was not able to recognise such technical means which deliver a contribution to the relevant state of the technology in the claimed invention. Since the differences in the disputable patent claim to the described Posting – namely the second list entry should contain instead of a part of a long file name an entire file name, and the information for the presentation of a long file name should be filed in the second list entry – are based just not on a solution with technical means. These steps exist in a purely ideally logical instruction for ordering of data which change the access mechanism on the file name and with it on the accompanying file though towards of the action described in the Postings, however, merely aspects of the pure programming explain. However, no knowledge which is based on on technical considerations forms the basis of you. With it such steps have no solution of a technical problem with technical means to the object, and are not to be considered, hence, in the check on inventive activity.

III. Other course

It is to be expected that Microsoft will insert appeal to the Federal Supreme Court, even if the patent at the end of the 20-year-old protective term (cf. article against the decision. 63 EPÜ) has went out in the meantime. Since provided that the gewgaw plaintiff must reckon furthermore on being taken up by patentee in Germany because of an injury of the patent in the past, or has already made licence payments, a legal protection need still exists after discontinuation of the patent for the statement of the gewgaw (cf. Federal Supreme Court, Urt. v. 8th of July, 2010 – Xa ZR 124/07, Rn. 8 – document sure about forgery; Federal Supreme Court, Urt. v. 16.02.1982 – X ZR 78/80).

Supplement from the 28th of May, 2017:

The appeal inlaid in the meantime (Federal Supreme Court file number X ZR 43/14) was taken back in the other course, so that the gewgaw decision of the BPatG is legal since the 28th of October, 2015.