Latest developments in European and German Patent Law

February 2002

1. German Federal Supreme Court now allows storage medium and computer program claims
   
   In the recent decision 'Search of faulty character strings', the German Federal Supreme Court (Bundesgerichtshof) followed the case law of the EPO Boards of Appeal (in particular in the decision T 1173/97 'Computer program product') and ruled that claims directed to a storage medium with a computer program stored thereon (Beauregard-claims) or to a computer program itself are allowable if the method carried out by running the program on the computer is patentable. Similar to the practice of the EPO, however,  the technical character of an invention is still a requirement for patentability. Pure business methods, for example, remain unpatentable.
2. New EPO Examination Guidelines on computer-implemented inventions
   
   The Examination Guidelines of the European Patent Office on computer-implemented inventions have been adapted to the recent case law of the Boards of Appeal, namely the decisions T 1173/97 'Computer program product' and T 931/95 'Controlling pension benefits system'. The examination steps for computer-implemented inventions can shortly be summarized as follows:
   
   (1) Software-related inventions and technical devices or methods for doing business are treated and examined as computer-implemented inventions.
   
   (2) To be patentable, a computer-implemented invention must have technical character. Pure business methods, for example, are not patentable.
   
   (3) To be regarded as new and involving an inventive step, the computer-implemented invention must provide a technical contribution to the state of the art, e.g. solve a technical problem.
   
   For a successful patent prosecution of computer-implemented inventions before the European Patent Office, care should be taken – when drafting the application – to include in the specification any advantages of the invention over the prior art on a technical level (e.g. saving memory space or improving processing speed) which later could serve as a technical problem solved by the invention.
3. Enlarged Board of Appeal of the EPO sets strict requirements for enjoying priority right
   
   In the recent case G2/98 the Enlarged Board of Appeal of the European Patent Office decided that in accordance with Art. 88 EPC priority of an earlier application in respect of a claim in a European patent application can be claimed only if the skilled person can derive the subject matter of the claim directly and unambiguously, using general knowledge, from the earlier application taken as a whole.
   
   As a consequence of this decision, priority from an earlier application can only be claimed for a patent claim of which all features are disclosed in the earlier application. This should in particular be considered when drafting and filing (further) developments of an invention including additional features (e.g. continuation-in-part applications according to U.S. patent practice) for which the applicant shall not enjoy a right of priority since the concept of 'the same invention' referred to in Art. 87(1) EPC has to be interpreted in a narrow or strict sense that, in view of the Board, is consistent with Art. 4F and 4H of the Paris Convention.
   
   Moreover, if a later (non-provisional) patent application is filed based on an earlier provisional application, the priority right of the earlier application can only be enjoyed for those claims of the later application of which all limitations are disclosed in the provisional application.
   
   In a very recent case ('Luftverteiler'), the German Federal Supreme Court confirmed the view taken by the Enlarged Board of Appeal.
4. Uniform 31-months time limit for entry into the European regional phase of PCT-applications under Chapter I and Chapter II
   
   With effect from 2 January 2002, a new uniform time limit of the 31 months from the earliest priority date of an international application is set for the entry into the European regional phase of the application. The 31-months deadline is applicable irrespective of whether or not a request for international preliminary examination has been filed.

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