May 2013: Germany Litigation Update - Recent Developments in Determining Patentability of Claimed Software Inventions in Germany


In recent years, the German Federal Court—the appellate court for nullity (invalidity) proceedings in Germany —has begun addressing the scope of patentable subject matter for software patents claiming graphical user interface (“GUI”) related inventions. Given the high stakes involved in the recent smart phone patent wars, the threshold issue of patentable inventiveness for software patents could take center stage in many emerging patent disputes waged in Europe.

Article 52 of the European Patent Convention (“EPC”) is the controlling statutory law governing patentable subject matter. Under this Article “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application” although under paragraphs 2(c) and 2(d) “schemes, rules and methods for performing mental acts, playing games or doing business.” Significantly, programs for computers; and presentations of information are excluded from protection.

In 2010, the German Federal Court addressed whether a software patent claiming a display of topographic information was valid. In German Federal Court - X ZR 47/07 – Wiedergabe topografischer Informationen [Display of topographic information], the patent-in-suit described a method of displaying topographic information relative to the position of a vehicle. In accordance with the practice of the Board of Appeal of the European Patent Office, the Court ruled that a subject matter could be regarded as a patentable invention under Article 52 EPC if at least one partial aspect of the teaching addresses a technical problem. In this regard, the exclusionary provisions of paragraphs 2(c) and (d) were considered to be only “coarse means” for identifying unpatentable subject matters that lack any technical relation.

The court next addressed the question of “inventive step” and, specifically, the proof required to establish sufficient technical relation to satisfy the inventive step test. With regard to the question of inventive step, the German court held that software-executable functions, such as displaying the actual position of a vehicle on a map or conditioning the height of the virtual point of view on the speed of a vehicle, failed to meet the technical solution threshold requirement for satisfying the inventive step test. Because the Court deemed the remaining features also not sufficiently inventive, the Court invalidated the patent-in-suit.

Subsequent decisions by the German Federal Court are in accord. For example, in “Webseitenanzeige” of 2011 (X ZR 121/09 – Webseitenanzeige [display of a website]), the Court decided that a computer-based method of favorably enhancing the dialogue between a user and a server—for example, by providing a specific design of the information displayed to the user—is not sufficiently technically related to satisfy the inventive step test.

The above mentioned decisions manifest the Court’s tendency to resolve the question of patentability of software and user interface related inventions substantially on the level of the inventive step test. This permits the Court to make a more flexible assessment of every single aspect of a teaching. The next years will show where the path taken by the German Federal Court will lead. Due to the ongoing Smart phone wars, several occasions could arise for the Court to further refine its case law on patents relating to software or means of displaying information in general.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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