Is Germany clearing the way for software patents?


A recent decision by the German Federal Supreme Court (Federal Supreme Court, GRUR 2010, 613 – “Dynamic Generation of Documents”) has left many people wondering whether Germany is now clearing the way for software patents. Specifically, the opponents of software patents are criticising the decision as “opening the door to monopolising an extremely important tool of society” and “allowing the patenting of matters of course”.

This article discusses whether the decision is really that groundbreaking.

With regard to patentability the statutory German law is similar to the European Patent Convention. Section 1 of the German Patent Act (GPA) sets out the basic requirements for patentability of inventions. The primary definition in Section 1 paragraph (1) provides that:

“(1) Patents are granted for inventions in all fields of technology if they are new, involve an inventive step and are susceptible to commercial application.”

Section 1 also attempts to define certain things that are not patentable. The provisions which concern software are:

“(2) In particular the following shall not be regarded as inventions according to paragraph (1)... (c) schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers;...

(3) The provisions of paragraph 2 shall exclude patentability only to the extent to which the protection of such subject-matter or activities as such is requested.”

Thus, the first question arising is:- when is a computer program a program for computers "as such"; and when can it be treated as something more, and therefore, potentially, be patentable?

According to the standing case law the not very enlightening answer is “when it has a technical character”.

So, how does one differentiate between computer programs with and without a “technical character”? In the past the Federal Supreme Court has, for example, found that a method such as a computer program is technical if it:

  • operates, controls or supervises the activity of a technical device (BGH GRUR 1980, 849 – ABS brake); or

  • relates directly to the operability of a computer and enables the interaction of its elements (Federal Supreme Court, GRUR 1992, 33 – Page Buffer).

While in the former “ABS-brake” decision the software has to interact with technical devices outside of the computer, the latter “Page Buffer” decision found that a technical effect within the computer is enough to provide the necessary technical character.

More generally, the Federal Supreme Court has found in more recent decisions (e.g. Federal Supreme Court, GRUR 2009, 479 – Controlling device for examination modalities) that:

“the program has to include instructions aimed at solving a specific technical problem with technical means.”

Hence, it is not the use of a computer program itself, but the solving of a technical problem by using a (programmable) computer that can lead to a patentable invention. The effect of this may become clearer when it is applied to the decisions mentioned above.

The technical problem addressed in the “ABS-brake” case was to prevent the locking of brakes, and the technical means provided to solve it was a specific control of those brakes. The technical problem in the “Page Buffer” case was to provide quicker memory access in a computer system, and the technical means provided was a specific way to buffer memory pages.

Therefore it appears from the case law that the requirement of technical character carries less weight than public discussion appears to suggest.

So, what is supposedly new in the “Dynamic Generation of Documents” decision?

The patent application considered in this case describes a client computer which sends requests to a server computer, the server computer then returns dynamically generated structured documents/files (e.g. web pages) to the client computer. The problem being addressed by the claimed invention is the need to generate such documents/files using a server with limited processing power. This problem is solved, according to the patent application, by software in the server extracting specific commands from the client’s request and adapting them to the limited power of the server.

In contrast to earlier decisions the Federal Supreme Court found that the claimed invention had a technical character, as technical character would exist if:

  • the workflow of the software is determined by circumstances outside of the computer; or

  • the solution to the problem is to design a computer program that takes the condition of the computer itself into account.

Against the background of the other Federal Supreme Court decisions this decision is not surprising. According to the first of the guiding principles set out in the case law, patents relating to software may have a technical character if there is a connection between the (technical) surrounding of the computer and the software operating within the computer - this concept being a part of the "ABS brake" decision, in which software controlled the brakes and the action of the software was determined by outside sensors.

According to the second guiding principle, a technical character can also exist if the solution to the technical problem takes into account various conditions of the computer on which the software will run. The “Page Buffer” decision demonstrated this principle in relation to a technical problem that existed only inside the computer itself. If, as in the “Dynamic Generation of Documents” case, the technical problem lies in the limitations of a computer system, a technical solution may be to take these limitations into account and find a way to produce software that works around them. Therefore, the subject matter of the patent application is not the use of a computer, as such, but the solving a problem (within the computer) with the use of the computer.

The requirement for technical character of software patents has therefore not been shifted, but at best, “sharpened”. As the previous case law had shown, the technical character requirement is not an absolute barrier which excludes any software implemented inventions from being patented and this decision provides a clearer guideline for assessing this important question of patentability.

The door for software patents remains as open as before. However, obviously along with the need to have a technical character they still have to comply with the other general requirements of novelty and inventive step. Neither software generally, nor “matters of course”, have become more likely to be patentable as a result of this decision.