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Legislative Implementation of Flexibilities - Germany

Title:Section 1 (3) 3) and (4) of the Patent Law of 16/12/1980 (as last amended by the Act on Improvement of Enforcement of Intellectual Property Rights of 31/07/2009)
Field of IP:Patents
Type of flexibility:Patentability or exclusion from patentability, of software-related inventions
Summary table:PDF

Provisions of Law

Section 1

(3) In particular, the following shall not be regarded as inventions within the terms of subsection (1):

3. schemes, rules and methods for performing mental acts, playing games or doing business as well as programs for computers;

(4) The provisions of subsection (3) shall constitute a bar to patentability only when protection is sought for said subject matters or activities as such.

GUIDELINES FOR PATENT EXAMINATION

3.3.3.2.1.

Basic Requirements Pursuant to Sec. 1 to 5 Patent Law

Patent protection shall only be granted for inventions relating to a field of technology. Patent protection is available for systematic teaching using controllable natural forces to achieve a result with clear cause and effect (BGH, BlPMZ 1970, p. 21 –rote Taube- and 2000, p.276, p. 278 -Sprachanalyseeinrichtung-). The "direct" utilisation of controllable natural forces is not mandatory for the technical character of a teaching (cf. BGH, BlPMZ 2000, p. 273, p. 275 - Logikverifikation-), but the result must be based on controllable natural forces and not on evaluative activity of the human mind.

The following subject-matter or activities are not considered to be inventions within the meaning of the Patent Law and are not patentable (Sec. 1 (2) Patent Law):

a)discoveries, scientific theories and mathematical methods (eg. Archimedes' principle, methods for solving a system of equations);

b) aesthetic creations (eg. purely decorative designs of a surface or a body);

c) schemes, rules and methods for performing mental acts, playing games or doing business (eg. Schemes for acquiring special skills; methods for solving brainteasers or schemes for organising commercial services) and computer programs (for details cf. paragraph 4.3.);

d) presentations of information (eg. literature, news or message contents).

The exclusion of the subject-matter or activities mentioned under a) to d) is only applicable to the extent that protection is sought for them as such (Sec. 1 (2), (3) Patent Law), ie. they are only excluded from patent protection insofar as they are claimed irrespective of any concrete implementation. Where they are utilised to solve a concrete technical problem, they are generally patentable in this context (BGH, Mitt.17 2001, p. 553, p. 555-Suche fehlerhafter Zeichenketten-).

The exceptions to patentability under Sec. 2 Patent Law should be noted (cf. paragraphs 2.6.3. and 4.2.).

4.3. Applications Comprising Computer Programs or Rules

4.3.1. Patent Protection for Inventions with Computer Programs, Program-Related Processes, Rules or the Like

Inventions involving a computer program, an arithmetical or organisational rule, other software characteristics or a program-related process are in principle eligible for patent protection provided they contain a technical teaching. A technical teaching is a systematic teaching using controllable natural forces to achieve a result with clear cause and effect (BGH, last stated in BlPMZ 2000,p. 276, p. 278 -Sprachanalyseeinrichtung-).

4.3.2. Programs, Rules as such Excluded from patentability within the meaning of Sec. 1 (2) Patent Law, are ao.

a) schemes, rules and methods for performing mental acts, playing games or doing business (eg. a plan for learning certain skills, a method for solving mental exercise problems, or a plan for organising a commercial service) and programs for computers (see also paragraph 4.3.3.), and

b) presentation of information (eg. literature, contents of news).

The subject-matter mentioned in items a) and b) are, by act of law, not regarded as inventions; however, patentability is excluded only to the extent to which protection is sought for the subject-matter as such (Sec. 1(3) Patent Law) ie. it is excluded from patent protection only in so far as it is claimed in isolation from a specific function. But when used to solve a specific technical problem it is – in that context – in principle patentable (BGH, Mitt. 2001, p. 553, p. 555 -Suche fehlerhafter Zeichenketten-).

Consequently, this exclusion does not apply to the program-related inventions ie. for technical instructions contained in programs or technical instructions drafted as a process or apparatus. Insofar as technical processes or apparatus are claimed in connection with subject-matter mentioned in Sec. 1 (2) and (3) Patent Law, they are in principle patentable. This is true, above all, for programs performing procedural steps in conventional technical fields (cf. BGH, Mitt. 2001, p. 553, p. 555 –Suche fehlerhafter Zeichenketten-).

4.3.3.

Technical Character of Program-Related Inventions

A program-related invention has technical character, if, in order to solve the problem underlying the invention, it makes use of natural forces, technical measures or technical means (e.g. hydraulic flows, electric currents in circuit elements and control systems, or computer signals), or if the solution is the result of technical considerations (cf. BGH, BlPMZ 2000, p. 273, p. 275 Logikverifikation-).

Whether or not this is the case, must at first be ascertained by taking into account the features of the patent claim, considering the contents of the relevant application documents.

In doing so, the claimed subject-matter shall be considered as a whole. The individual features must not be regarded separately. All features pertaining to the solution of the problem, ie. all features of the patent claim, shall be taken into account, even though they are non-technical features (cf. also paragraph 3.3.3.2.4.). The link with technology must be established in the patent claim (cf. BGH, BlPMZ 2000, p. 273, p. 274 -Logikverifikation-).

On the basis of an assessment of the subject-matter defined in the patent claim it must be established whether the subject-matter of the application relating to a process or a program for a computer or to a corresponding apparatus meets the requirements for technical character, pursuant to Sec. 1 (1) Patent Law. This includes the possibility of evaluating individual features of a claim differently, provided there are justified reasons for doing so, by taking account of the context on the basis of the understanding of a skilled person. However, the result of the assessment must not be made dependent on whether the subject­matter is novel and inventive; nor should the assessment be biased towards what was already known and what, by comparison, is novel in the claimed teaching. The crucial issue is how the main substance of the claimed teaching is to be understood and evaluated from the skilled person's point of view at the time of filing the application (cf. BGH,BlPMZ 2000, p. 273, p. 275 -Logikverifikation- with further references). Differences as compared to the state of the art are not investigated during the examination as to whether the invention has technical character, but later, during the examination as to novelty and inventive step.

4.3.4.

Process / Program / Circuit / Data Processing Unit

In case of program-related inventions the technical character does not depend on the existence of a fixed circuit scheme (special purpose circuit). The same inventive idea underlying such technical scheme may also be patentable as a process, specifically in terms of combining software with programmable hardware. The decisive point is that the invention teaches and requires the use of technical means or technical considerations to solve the problem (cf. also paragraph 4.3.3.).

Program-related inventions may have a technical character even if the technical means used for the solution, ie. data processing units or computer, circuit or control elements are already known. It is not detrimental if each of the individual elements separately operates in a known way.

The technical character of a process carried out by means of a program cannot be challenged on the ground that an ordinary data processing unit is used for the intended purpose. Rather, the characterising instructions in the claimed teaching must solve a specific technical problem.

In these circumstances, the claimed teaching may also be protected as a computer program or in any other form which uses a data processing system (cf. BGH, Mitt. 2001, p. 553, p. 555 -Suche fehlerhafter Zeichenketten-). This applies particularly to manufacturing and control processes for technical installations, machines and devices. A program-related operating process for a control device, for instance, may be technical, if known control elements operating according to a programmed instruction have to be used to solve the problem.

A program does involve a technical teaching, in particular, where it is integrated into technical processes, for example, where it processes results of measurements, controls process flows or acts in another way as a control element.

This is the case, for example, in an anti-lock braking system for wheel brakes: The sensors and valves are linked via control signals in accordance with a program­related process, whereby a signal triggered by the movement of a monitored wheel changes the brake pressure by activating a valve (cf. BGH, BlPMZ 1981, p. 70-Antiblockiersystem-).

An invention enabling the automatic indication of different parameters determined by measurements combined according to a given method of calculation provides a technical teaching (cf. BGH, BlPMZ 1992, p. 255-Tauchcomputer-).

A program-related teaching may generally be protected by a patent if it concerns the functional capability of the data processing system as such and consequently enables the direct interaction of its constituent elements (cf. BGH, BlPMZ 1991, p. 345 -Seitenpuffer-).

4.3.5.

Formulating the Teaching in the Claim

An apparatus (computer) which is configured in a specific way has in principle technical character due to its concrete embodiment. This applies even if, for example, texts are edited on the computer. For the purpose of assessing the technical character of an apparatus it is not relevant whether the apparatus produces a (further) technical effect, whether technology is enriched by it or whether it makes a contribution to the state of the art (BGH, BlPMZ 2000, p. 276 -Sprachanalyseeinrichtung-).

The teaching concretely formulated in the claim is not necessarily patentable just because the claim is directed to a physical object. The question as to whether the subject-matter of a claim is patentable cannot be answered solely in the light of what category it belongs to.

Rather the main thrust of the claimed teaching is decisive.

A teaching falling within the prohibition on patenting (computer program as such) does not become patentable merely because it is set out in a patent application in a form which is stored on a conventional data carrier (BGH, Mitt. 2001, p. 553 -Suche fehlerhafter Zeichenketten-).

The case is different where the features of the claim in question characterised as a device serve to solve a concrete technical problem (cf. BGH, BlPMZ 2000, p. 276-Sprachanalyseeinrichtung- , BGH, Mitt. 2001, p. 553, p. 556 -Suche fehlerhafter Zeichenketten- ).

4.3.6.

Cases of Doubt

For determining the technical character of the invention, it is sufficient if compliance with the requirements of technicality is established prima facie in consideration of the above stated principles. If sound reasons are given that the invention is technical, remaining doubts do, as a rule, not justify the denial of its technical character.

4.3.7.

Presentation of the Application

Applications must be drafted in the German technical language. However, they may contain the customary foreign-language technical terms from the field of data processing.

In addition to or instead of structural features (circuit details) also customary operation-related and function­related data are allowed in the patent claims.

The description may be supplemented by diagrams which concern the operational steps of data processing.

It may include a data flow chart, where the time sequence of related operations with the data and data carriers is indicated, as well as a program flow chart showing all the possible paths that data can take through the program.

Short excerpts from a program for data processing units in a customary, exactly defined program language may be permitted in the description, if they are conducive to intelligibility.

4.4.

Documents for the First Publication of the Patent Application (Offenlegungsschrift)

The patent applications are published to inform the public of the possible creation of industrial property rights.

If the examination as to obvious defects cannot be concluded before the expiry of the relevant period for laying the application open for public inspection (18 months, Sec. 31 (2) No. 2 Patent Law), the uncorrected documents of the patent application shall be published.

The application shall, as a rule, be laid open to the public even if it is the subject of an appeal, except for appeals against the inspection of the files itself, against its date or against the proposed contents of the first publication of the patent application (Offenlegungsschrift).

The patent application is not published and no reference pursuant to Sec. 32 (5) Patent Law is made, if the patent specification has already been published.

The originally filed documents must be used for the first publication of the patent application, provided these are printable. If the drawings are missing on receipt of the application, although the application contains a reference to drawings or if the abstract is missing, and if these documents are filed subsequently in due time, they shall be incorporated in the documents for the first publication of the application (Offenlegungsschrift).

If the whole application or parts thereof is/are not drafted in German, the German translation shall be incorporated in the publication of the patent application (Offenlegungsschrift) instead of the foreign-language documents, provided it was filed in due time and complies with the requirements under Sec. 14 Patent Ordinance.

For the printing of the patent application (Offenlegungsschrift), after the examination as to obvious defects by the examiner, also such documents shall be used which were subsequently filed because the original documents were not printable or contained obvious errors, or were submitted upon the request of the Examining Section to remedy an obvious defect. Other unsolicited new documents filed by the applicant shall be included in the files but not used for the first publication of the patent application (Offenlegungsschrift), not even if expressly so requested by the applicant. In the latter case the applicant shall be briefly notified accordingly.

In all cases in which the publication of the patent application (Offenlegungsschrift) is not based exclusively on the documents received on the filing date, a note shall be made on the title page of the first publication of the patent application (Offenlegungsschrift), stating that the contents of the publication are not identical with the documents filed on the date of filing.

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