NEW DECISION OF FEDERAL COURT OF JUSTICE IN GERMANY ALLOWS BROAD PROTECTION OF COMPUTER-IMPLEMENTED INVENTIONS
11 juin 2010
The German Federal Court of Justice in Karlsruhe clarified in a recent decision (“Dynamic document generation”) of April 22, 2010 the criteria for patentability of computer-implemented inventions. The court applied a two-step test similar to the practice of the European Patent Office. In order to be patentable subject-matter, an invention must (i) have technical character and (ii) solve a concrete technical problem with technical means. Both criteria can be fulfilled by an invention lying purely in the field of software technology.
The claimed invention on which the court decision was based relates to a method for dynamically generating structured documents as e.g. HTML pages containing dynamic userspecific content on a server computer. In order to save resources on the server computer the method according to the invention applies for the dynamic document generation a particular procedure using a limited instruction set instead of running an otherwise necessary large application as e.g. a Java Virtual Machine. The patent application was rejected by the German Patent Office based on lack of inventive step and in the subsequent appeal proceedings by the Federal Patent Court in Munich on the ground of lack of technical character.
In the recent decision, the Federal Court of Justice took a different view, finding that the claimed invention had technical character and was not excluded from patentability as computer program as such. The case was remanded back to the Federal Patent Court for renewed judgement on novelty and inventive step.
In a first step the judges assessed the technical character of the invention and – in accordance with the EPO case law, in particular the landmark Hitachi-decision - clearly stated that a computer device programmed in a particular way or a method using such computer device always has technical character irrespective of the purpose of the computer. Further, the patent claims may comprise a combination of technical and non-technical elements.
In a second step the court found that the claimed invention is not a computer program as such which would be excluded from patentability by German and European patent law, because it solved a concrete technical problem with technical means. The technical problem was to provide a method for dynamically generating structured documents on a server having limited resources and this problem was solved by using a particular procedure including using a reduced instruction set for the document generation. In the grounds for the decision as well as the headnote the Federal Court of Justice pointed out in a generalized manner that a solution to a technical problem with technical means is present if the solution realized by the computer program is influenced by technical conditions outside the computer or the technical conditions of the computer device itself as e.g. its software architecture.
The highest court in Germany for patent matters thus confirmed in unusual clear words that inventions in the field of software technology are patentable in the same way as in other fields of technology if the requirements of novelty and inventive step are met.
© BETTEN & RESCH 2010
