[Random-bits] German Pat.Off. supports software/business patents
James Love
james.love@cptech.org
Tue Mar 19 18:30:02 2002
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Sent: Tuesday, March 19, 2002 5:23 PM
Subject: PATNEWS: German Pat.Off. supports software/business patents
!20020319 German Pat.Off. supports software/business patents
The German Patent Office recently released a very interesting document
providing great support to software and business method patenting in
Europe. The text is below.
They focus on the phrase "controllable natural force" as their
definition of "technical", stating at one point: "The field of information
is therefore also included, at least in so far as it is controllable by
natural forces, that is to say, can be represented by physical variables
in the form of data and processed by machine, thus producing systematic
results with clear cause and effect. In this sense, information can be
regarded as a physical variable and data processing as a physical process."
To deny information to be of the natural forces is to deny the writings
of Einstein, Hawking, Landauer and many other physicists, so it is good
to see the German P.O. agreeing with the physicists (they could have made
a cute mention of the universe as a quantum computer).
It would have been nicer if the German P.O. had briefly mentioned that
"controllable" is close enough to "applied", and "natural force" is of the
"sciences" for "controllable natural forces" to be equivalent to "applied
science", a common dictionary and philosophical definition of "technical"
as I argued in my paper on "technical effect".
The document was mostly written by lawyers, since it ignores a fair
amount of technology that would strengthen the document's arguments for
the patentability of software. For example, they mention Turing machines,
a nice historical reference, but do not mention the many hardware/software
codesign tools and representation languages that support the growing
equality of hardware and software design and reproducibility (and thus
their equal patentability), though do mention that source code and circuit
diagrams are equally tricky to deal with in a patent specification. They
make an argument that source code is "read only", not directly executable
(except maybe with an interpreter). This is a false statement, since there
are a variety of technologies that make all forms of source code directly
executable. They also do not mention software reverse engineering tools,
which pretty much eliminate the distinction between object code and source
code. A mention of DNA computing would be nice too. Hard to be truly
critical of this ommission, since the US PTO and US courts as well often
ignore modern software engineering developments in their statements on
software patenting.
If Europe as a whole adopts the philosophy of this document, it will
go a good way towards making American and European practices more
compatible. There still are differences, but differences worthy of
discussion to resolve (and for the lawyers, in meetings where this
document and others are discussed, have some non-lawyers involved. You
lawyers have to pay more attention to the sciences and engineerings you
are imposing laws on).
A few suggestions if the German P.O. ever revises this document.
First, they should have a paragraph commenting on "technical" as an
both a "controllable natural force" and as an "applied science". There
is too much conventional semantic overlap to not try and tidy up this
language of patent law. Second, the German P.O. should seek the advice
of a few software and hardware engineers to review the assertions made
below about the nature of source code. Third, they should have a few
insulting comments about software copyright (which has little to do with
this document, I just like seeing insulting comments about software
copyright - they can freely borrow from my paper). Fourth, this is a
document of Europe for Europe, and cites all European case law. But in
an era of patent harmonization talks, it wouldn't hurt to include
mentions of US case law (like State Street and Alappat) in parallel
to the European citations, to provide more common ground between the
two.
There is one concept they get totally wrong in what follows. But so
does everyone else on both sides of the Atlantic. But that is a big
PATNEWS for this fall.
Greg Aharonian
Internet Patent News Service
(I regret not being around when a certain European bursts a few veins
in his neck after ready this :-)
====================
- 1 -
THE CONCEPT OF "TECHNICAL INVENTION"
GERMAN PATENT AND TRADEMARK OFFICE
Munich, 4 March 2002
THE CONCEPT OF "TECHNICAL INVENTION" (SUMMARY)
A patent protects the subject-matter of an invention as realised and during
its subsequent exploitation. This means, on the one hand, that an invention
has to be fully disclosed and, on the other hand, that it must be
reproducible for anyone anywhere under the stated conditions. This is at
least the case if it is limited to the field of technology.
In the German Patent Law and the EPC, the subject-matter protected as an
invention is determined by the terms of the claims (or, according to a
proposed revision, "by the claims"). The description and drawings are to
be used to interpret the features defined in the claims. Conversely this
means that the claims, and in particular the main claim as the most general
formulation of the invention, have to satisfy all the patentability
criteria.
The concept of technology is associated, on the one hand, with the use of
controllable natural forces and, on the other hand, with systematic action
and an achievable result with clear cause and effect. This indirectly
touches on factors such as feasibility, reproducibility, repeatability,
restriction to intended use, direction of purpose, and utility, in each case
associated with the use or application of controllable natural forces.
What is essential is the reference to facts which can be objectively
established.
Unlike copyright, a patent is not concerned with reproducing the content
of an intellectual creation but with the reproducibility of the given
teaching. This is ensured by the concept of "technical". The negative list
of Section 1 (1) and (2) PatG (in parallel with Article 52(2) and (3) EPC)
must therefore be construed as applying to non-technical methods and
apparatuses associated with the concepts listed.
Where an overall view is taken, the inclusion of new non-technical features
in known technical subject-matters again yields a technical subject-matter.
In formal terms novelty can therefore also be established on the basis of
non-technical features. In individual cases, non-technical features will
therefore inevitably be excluded when assessing novelty and inventive step.
Such a procedure corresponds to the procedure in other areas, e.g. in the
case of insignificant features of an invention or statements of use and
functional statements in a product or substance claim.
- 2 -
The concept of "technical invention"
I. Starting position
In Germany, the criteria for the patentability of a subject-matter are
stipulated in Section 1 (1) of the German Patent Law (PatG), in parallel
with Article 52(1) EPC. Patents are therefore to be granted for
"inventions that are new, involve an inventive step and are susceptible
of industrial application." The term "invention" is not defined, although
the novelty and inventive step required for a patent are assessed by
comparison with the "state of the art" under Sections 3 and 4 PatG (in
parallel with Articles 54 and 56 EPC). This implies that patentable
subject-matters must fall within the "art" (i.e. the field of technology).
In this sense the term "invention" in Section 1 (1) PatG can be limited to
the field of technology. The German Patent Law has therefore always implied
that patent protection is limited to the field of technology, although it
likewise does not define the term "technology".
The "negative list" in Section 1 (2) and (3) PatG (in parallel with Article
52(2) and (3) EPC) is not exhaustive but does indicate subject-matters
which "in particular shall not be" regarded as inventions (discoveries,
scientific theories and mathematical methods; aesthetic creations; schemes,
rules and methods for performing mental acts, playing games or doing
business, and programs for computers; presentations of information). This
applies, however, only to the extent that protection is requested for the
subject-matters "as such".
Section 1 (2) and (3) PatG can be construed as a juxtaposition of the
various forms of intellectual property: to be more specific, patent
protection and copyright and the distinction between the two. A distinction
needs to be made between the various forms of intellectual property because
of the various categories of property rights and the protection associated
with them, their nature and scope and the conditions under which the
particular property right can be obtained. The specific shape of a bottle
can thus be protected by the following, for example:
- a patent, on the basis of its technical properties (eg compressive
strength)
- a registered design, on the basis of its design
- a trade mark, on the basis of its distinctiveness
- copyright, on the basis of the originality of its presentation.
- 3 -
The non-exhaustive list of subject-matters in Section 1 (2) and (3) PatG
inevitably raises the question as to the criterion by which such
subject-matters can be identified. Lack of technical character has been
viewed as one such criterion, or at least as a suitable substitute. In
this sense, the concept of technology was regarded by the Federal Court of
Justice (BGH) as a useful criterion for distinguishing between patentable
and other achievements. The EPO boards of appeal also take the view that
an invention as defined by Article 52(1) EPC must have a technical
character. The limitation "as such" in Section 1 (3) PatG (or Article 52(3)
EPC) should therefore be interpreted as meaning "where the concepts stated
do not relate to technical methods or apparatuses" (example: the exclusion
of "games as such" relates only to rules for playing games and not to
physical entities for playing a game).
II. The subject-matter of the invention - extent of protection and
patentability
Although there is some uncertainty about the meaning of the concept
"invention" in the German Patent Law and the EPC, they both specify the
extent of protection of the patent precisely.
The subject-matter protected as an invention is determined "by the claims"
in Section 14(1) PatG (see also Article 69(1) EPC). The description and
drawings are to be used to interpret the features of the claims. Unlike
with copyright, any presentation or form of expression whatsoever will not
therefore do for a patent. In the first place, the application has to
undergo an examination procedure and, in the second place, a subject-matter
has to be comprehensibly presented in the claims and description in
terms of both its scope and the way it works in practice. A written
presentation in the official language (German) is therefore obligatory
in the case of a patent. In terms of its legal effect and scope of
protection, a national German patent is addressed to the general public
in Germany. In terms of the implementation of its teaching and an
understanding of the state of the art, it is addressed to an average
person skilled in the particular art in any country.
Information presented other than in words, e.g. drawings or the source
code of computer programs, is only optional in view of its limited
accessibility, and can therefore make only a limited contribution to
the disclosure of the invention. This information can be used only to
provide a further explanation of the subject-matter described in the
claims. The fact that an average skilled person can deduce the teaching
contained in a source code or technical drawing does not mean that the
invention is adequately disclosed. On the contrary, a fundamental
principle of patent protection is that the subject-matter protected
is presented in a way that can be understood by the general public.
- 4 -
This means that the invention has to be presented in a language that can
be read by all. If that were not to be the case, this would amount to sui
generis protection for computer programs, similar to the protection for
microchips. The source code as the basis of the disclosure of an application
will therefore remain just as tricky a problem as a technical drawing or
a circuit, even if the concept of a "program as such" is eliminated from
Article 52 EPC or Section 1 (3) PatG in the course of the revision of the
EPC.
The invention must be patentable; i.e. it must be new, inventive and
susceptible of industrial application. It must, of course, also have a
technical character.
In the examination procedure, therefore, the subject-matter of a patent
application is examined against the above patentability criteria. Claims
which meet these criteria are drafted, including in particular a main claim
which defines the invention in its most general form. If no such claims
can be drafted, the application is refused.
The assessment of the technical character of the invention has to be based
on all the technical features contributing to the solution of the problem
in accordance with the definition of technology. In the examination as to
novelty and inventive step, a distinction has to be made between known and
new features by comparison with the state of the art. In the case of
technical character, however, such a distinction is just as inappropriate
as it is for industrial applicability, since all the features of the claim
contribute to the solution and therefore to the character of the solution.
To satisfy the novelty and inventive step criteria, the whole of the
solution described in the claim must indisputably differ from the existing
state of the art in at least one feature. Novelty and possibly also
inventive step can then be established on the basis of this feature. Until
1978 technical character was also similarly assessed by means of a system
where only the difference between the features of the claim and the state
of the art were considered, without also considering the features of the
whole solution as described in the claim. For the German Patent and Trade
Mark Office this meant the "Kerntheorie", which was evolved and sometimes
applied by the Federal Court of Justice, while for the EPO this meant the
"contribution approach" in conjunction with the "problem-solution approach".
- 5 -
According to the "Kerntheorie", which has now been abandoned, technical
character was established by the methods used for novelty and inventive
step; only the difference between the features of the claim and the state
of the art (the "essence" or "Kern") were considered. Along with the subject
of the claim and its equivalents, the general inventive concept was
protected as the "essence of the invention". The "essence" was established
by comparing the subject-matter of the application with the state of the
art and was protectable even if not a constituent part of a claim. In this
environment, it was logically possible for the invention as a whole to be
considered non-technical if this "essence" proved to be non-technical. The
"Kerntheorie" is also behind landmark Federal Court of Justice decisions
on the patenting of computer programs, e.g. the "Dispositionsprogramm" {1},
"Walzstabteilung" {2} and "Flugkostenminimierung" {3} decisions.
This thinking, based on the "essence of the invention", may have prevailed
even longer in individual cases (until the Federal Court of Justice
"Chinesische Schriftzeichen" decision). It may also have influenced the
EPO's 1985 Guidelines for Examination, which applied until recently and
where technical character was assessed from the difference between the
features of the subject of the claim and the state of the art (under the
heading "contribution approach").
Since the EPC came into effect and the German Patent Law was accordingly
amended for applications filed after 1 January 1978, there has no longer
been any basis for assessing technical character from the difference between
the subject of the claim and the state of the art. Since then the scope of
the protected invention has instead been determined (in conformity with
Article 69(1) EPC) solely by the terms of the claims, while the description
and drawings are used only to interpret the features defined in the claims
(Section 14 PatG; Schulte Section 14 No.12 with further references). In the
case of applications since 1978, therefore, all the features of the claim
can contribute to the assessment of technical character, including those
known from the state of the art. The addition of non-technical features to
a technical subject-matter does nothing to alter its technical character.
This is the view taken by recent Federal Court of Justice {4} and EPO board
of appeals decisions. The assessment of individual features in connection
with the establishment of novelty and inventive step is a different matter
(see Part V.).
- 6 -
III. The concept of "technology" and "technical"
In its landmark decisions (for example "Dispositionsprogramm' {6},
"Rote Taube" {7}, "ABS - Antiblockiersystem" {8}, "Seitenpuffer" {9},
"Chinesische Schriftzeichen" {10}, "Tauchcomputer" {11},
"Logikverifikation" {12}, "Sprachanalyseeinrichtung" {13} and "Suche
fehlerhafter Zeichenketten" {14}), the Federal Court of Justice has defined
and applied the concept of "technology" or "technical", which establishes
an invention but which is not specified in detail in the German Patent Law.
The Federal Court of Justice defines as technical (most recently in the
"Logikverifikation" {15} decision) a teaching for systematic action using
controllable natural forces to achieve a result with clear cause and effect.
The definition of technology used in "Logikverifikation" (1999) accords
with that already evolved by the Court in its 1969 "Rote Taube" decision.
The selection made by a breeder with a view to producing a specific result
in the "Rote Taube" decision corresponds to the testing of integrated
circuits on a chip for the planned functions in the "Logikverifikation"
decision. The selection process on which these two cases are based cannot
be termed non-technical because it does not make direct use of
controllable natural forces (i.e. a selection process by machine using
specifiable criteria, for example) but tries to advance the possibility
of manufacturing suitable technical modules in another way by means of
technical knowledge (that of a skilled person who compares the chip testing
result with the requirements and evaluates it accordingly). The fact that,
in both cases, the Federal Court of Justice used the same definition of
technology is therefore consistent and is also generally accepted as such.
The additional point specifically made in the 1981 "Antiblockiersystem/ABS"
decision, namely that the result is to be the direct consequence of
controllable natural forces without the intervention of human mental
activity, was left out of account, no doubt for practical considerations
and in order to concentrate on essentials. Human intervention, e.g.
dialogue with the computer in conversational mode, does not rule out a
technical character, unless the person concerned has to weigh up different
possibilities or make judgments.
Taking the main concepts from the above definition, we find that the term
"technology" is associated, on the one hand, with the use or application of
controllable natural forces and, on the other hand, with systematic action
and an achievable result with clear cause and effect. This indirectly
touches on factors such as feasibility, reproducibility/repeatability
(same effect with same starting conditions), restriction to intended use,
direction of purpose, and utility, in each case associated with the use or
application of controllable natural forces. What is essential is the
reference to facts which can be objectively established. Factors which do
not accord with this understanding of "technology" include dependence on
individual talents, skills and judgment (e.g. telepathy, sensitivity to
the weather).
- 7 -
It should, however, be borne in mind here that the assessment of technical
character relates not to the objects but to the manner in which they are
processed. Chance events (e.g. the disintegration of elementary particles)
or works of art (paintings) can also be examined with "technical means" as
defined above, and the results can be processed accordingly. On the other
hand, technical objects can also be used non-technically if their use or
deployment does not meet the criteria of technical character (e.g. an
artist's brush for a painter, a camera for a photographer).
The Federal Court of Justice's definition of technology differs from an
original and further understanding of technology (the Ancient Greek word
"tekhne" means "art" or "skill") which also included individual skills
(e.g. an artist's painting technique or a sportsman's technique with the
ball). It is obvious that such skills do not accord with the Federal Court
of Justice's concept of technology, since here the result with clear
cause and effect depends too much on the skills of the individual. This
manifests itself, for example, in different achievements under the same
boundary conditions and so in inadequate reproducibility. Taking the
Federal Court of Justice's concept of technology, the desired result is
therefore not adequately predictable, even with the application of
controllable natural forces, but is largely dependent on the individual.
It does not therefore constitute technical teaching which is reproducible
for all.
The Federal Court of Justice's definition of technology is connected with
the performance of functions by machines. This reminds us of the "Turing
Principle", whereby a problem can always be solved by a machine if it can
be described by an algorithm. The algorithm may, of course, be described
only in words, in the form of method steps. The nature of the problem to
be solved is not thereby restricted. Organisational measures or business
activities, for example, can also have a technical solution if they are
carried out by a machine without the intervention of a human mental act
involving the weighing-up of different possibilities.
The fact that an algorithm is represented as a mathematical formula cannot
be used as evidence of a lack of technical character. Since mathematics is
the mode of expression of the exact sciences and technology, mathematical
expressions have to be used to describe a technical object or method, e.g.
an optical lens, a light guide or a compression process. In such cases, the
formula is not protected in its general structure (ie the mathematical
method as such) but only in conjunction with the specific use. The
representation of a mathematical structure without reference to a
specific use is, however, pure scientific knowledge (or a mathematical
method) and does not have a technical character. Conversely, the use of
a mathematical formula does not necessarily produce a technical
subject-matter.
- 8 -
According to the Federal Court of Justice's definition, it is immediately
apparent that the field of technology alters to the extent that natural
forces are controllable. The field of information is therefore also
included, at least in so far as it is controllable by natural forces, that
is to say, can be represented by physical variables in the form of data and
processed by machine, thus producing systematic results with clear cause
and effect. In this sense, information can be regarded as a physical
variable and data processing as a physical process {16}. An irreversible
logical1-bit operation in a computer accordingly requires at least an
energy of E = k T In 2 (k: Boltzmann constant, T: absolute temperature).
According to this view any type of data processing is also a technical
process. Data processing, that is to say the processing by machine of
variables which can be physically represented, using an appropriate system,
is therefore normally to be considered technical. If the concepts are
understood in this way, the definition of technology given by the Federal
Court of Justice therefore seems entirely relevant. According to the
Court's interpretation, the concept of "technology" cannot, however, be
considered to be static, that is to say always the same, but may be
modified if so required by developments in technology and by patent
protection adapted to such developments.
Teaching does not have a technical character merely because contents are
stored or merely represented or reproduced in the structures of a computer
or data storage device. This would mean that purely descriptive or artistic
representations could also become patentable by being stored electronically.
Substantive matter of any kind, e.g. a descriptive text or an image or
music, does not, however, become technical by being incorporated in an
electronic storage device, any more than it does by being printed on
paper (see BGH "Dispositionsprogramm" decision {17}). There is also
international consensus concerning this restriction. Freedom of intellectual
creativity must always be guaranteed.
The definition evolved by the Eurolinux Alliance will also be mentioned
here by way of example to show how it differs from the Federal Court of
Justice's definition of technology. This definition was formulated
specifically in the context of discussion on the patenting of computer
programs. According to this view, "technical" should be defined as
"pertaining to the use of natural forces to directly cause a transformation
of matter without intervening operations of mental deliberation". This
approach is evidently intended to exclude from patentability logical
- 9 -
operations executed on a computer and based on mental deliberation. Yet it
is important to bear in mind here that a program-related teaching of this
kind is not designed to protect a mental act but a product which, with the
aid of a machine (computer), automatically causes particular functions to
operate. The fact that the functions also cover areas which have hitherto
been within the sphere of personal skills, including "intellectual" skills
(e.g. language recognition and translation), is due to the development of
technology, and particularly information technology. Information is to be
presented in machine-processable form (i.e. in the form of data) and made
accessible to processing by machine. A historical comparison can be drawn
with the printing press, used to copy documents: it changed from an
artistic (i.e. non-technical) process carried out by an individual into
a process involving reproduction by machine (i.e. technical). The computer
reproduces information (by machine) on the basis and in the scope
of the functions made available.
The way in which the European Patent Office boards of appeal interpret the
concept of technology will now be discussed. In various decisions reference
has repeatedly been made to the concept of "technology" or "technical" in
the context of establishing patentability, particularly in cases relating
to the field of data processing and business methods, e.g. in
"Computer-related invention/VICOM" {18} and "Data structure
product/Philips" {19}. The importance of this concept in distinguishing
between patentable and non-patentable inventions was also stressed. No
specific indication was, however, given as to how this concept should be
generally understood or what it implies in substantive terms. The Guidelines
for Examination in the EPO, particularly Part C, Chapter IV, also emphasise
the importance of the concept for establishing the patentability of an
application, without defining it in substantive terms. In borderline
areas (particularly with applications from the field of data processing
and in connection with business methods, for example), discrepancies may
occur through different subjective approaches and the results may then
differ even where the facts are similar.
IV. The subject-matters excluded under Section 1 (2) and (3) PatG
A patent protects the functional principle of apparatus or a method in its
practical outworking (i.e. the subject-matter with which the functions and
effects described are associated) from being made, put on the market,
offered or used without authorisation. Unlike copyright, a patent is not
therefore solely concerned with reproducing the content of an intellectual
creation but with "doing" and "being able to do". An essential requirement
for an invention is its reproducibility. This means that the teaching
imparted by a patent must, on the one hand, be described in a generally
comprehensible manner and, on the other hand, be achievable by a skilled
person in an "embodiment".
- 10 -
Technical teaching therefore manifests itself in the performance of
functions with the systematic use of natural forces and the associated
result with clear cause and effect. Patent protection for the practical
representation of a subject-matter under Section 9 PatG or Article 64 EPC
("making, putting on the market, offering, using") therefore accords with
the reference to the field of technology and thus also with the technical
character requirement.
Looking in detail from this point of view at the subjects excluded by
Section 1 (2) and (3) PatG (or Article 52(2) and (3) EPC), we reach the
following conclusion:
(a) Discoveries, scientific theories and mathematical methods
(Section 1 (2) No.1 PatG):
These are, in the first place, only realisations which are dependent on
perception by the human senses or the human mind. "As such" they do not
involve the use or application of controllable natural forces and hence
have no embodiment. If a specific use is indicated, this may involve a
reproducible patentable teaching. It is not then a question of the
particular subject-matter "as such". Reference is made here to the Federal
Patent Court (BPatG) "Viterbi-Algorithmus" decision {20}, where a general
optimisation algorithm was used to optimise electronic networks.
(b) Aesthetic creations and presentations of information
(Section 1 (1) Nos 2 and 4 PatG)
These subject-matters are, by their very nature, intended to be perceived
"as such" by the human senses and do not therefore impart any reproducible
teaching. Methods and apparatuses for the reproducible realisation of
these subject-matters are not excluded.
(c) Schemes, rules and methods for performing mental acts, playing
games and doing business (Section 1(2) No.3 PatG)
These subject-matters differ from those referred to above in that they are
reproducible, i.e. they present a teaching for systematic action in order
to achieve a result with clear cause and effect. Contrary to this
definition,
however, they can also be reproduced "as such" without the use of
controllable natural forces. For this reason, for example ideas for games
- 11 -
or rules for playing games, being "games as such", have been excluded from
patenting in the case law. Specific apparatuses or physical entities for
carrying out ideas for games and rules for playing games can, however,
be patented.
Developments in technology, and particularly in information processing,
increasingly provide opportunities for carrying out such methods using
controllable natural forces, i.e. by executing the methods using computer
programs. These methods, by being realised in this way, can therefore fall
indirectly within the definition of "technology" or "technical" to the
extent that programs for computers are to be classified either in the field
of technology or as "programs as such". The methods considered, and
especially methods for doing business, can therefore be excluded only to
a limited extent by the concept of "technology" or "technical". Decisions
by the Federal Court of Justice {21} and the EPO boards of appeal {22} have
generally acknowledged the technical character of apparatuses using
software, particularly as regards the different circuit states occurring
and their energy consumption.
(d) Programs for computers (Section 1(2) No.3 PatG)
The term "computer program" or "programs for computers" is generally
understood to comprise both an "embodiment" or "executable mode", that is
to say a functional operation with a specific result which can be exploited
(i.e. a technical teaching which may be protectable by a patent), and also
a "read-only mode", that is to say only the purely intellectual description
of the content of the procedure, not involving its realisation. On the one
hand, "a program is executed" and the objective effects achieved in practice
are utilised; on the other hand, "a program is written" in the way that a
book is written or a piece of music is composed (the effect of these
generally being restricted to absorption of the information by the human
intellect).
Since a patent relates to technical teaching, i.e. the functional operation
with the result which can be exploited, what is involved is essentially the
"executable mode" (run-time mode) of the computer program (as represented
in the published patent application or patent in the official language),
i.e. the mode which reproduces the specified functions by machine and so
satisfies the definition of "technical".
- 12 -
On the other hand, any representation of the computer program which does
not relate to the practical realisation of the effects and functions stated,
but only to their description and their absorption by the skilled person's
intellect, can be construed as "read-only mode". This can also be a general
publication with the same content as that of a patent specification (e.g.
a user manual), but containing in particular the source code as the form
of the computer program which generally cannot be directly executed.
The source code is the full description of program commands and
conventions in a machine-readable language on a data carrier, but it
cannot be directly executed at that stage because it is in "read-only
mode". The reproduction of a program as a source code does not generally
(i.e. without appropriate compilers or interpreters) produce the effects
associated with the execution of the program. The source code can therefore
be regarded as the "read-only mode" of the computer program and so as the
concrete form of the "program as such".
Classification of the source code as the "read-only mode" of a computer
program, and so as a "computer program as such", excludes it from patent
protection. This is not affected by the fact that there are forms of the
source code which can be directly executed (without a compilation run,
e.g. via interpreters), so that "read-only mode" and "executable mode"
coincide in terms of form.
According to EPO board of appeal decisions {23}, the representation of a
program in words (as a procedure with the associated operative effects
and hence as "execute or read-only mode") also has technical character if
the interaction between computer and program goes beyond the "normal".
The wording alone corresponds to the use of language in the case of
novelty and inventive step. There is technical character if the
subject-matter of the patent described in an official language meets the
criteria of novelty and inventive step. Then the program on the appropriate
data carrier is not a "program as such" but at least a development or an
advantageous measure for carrying out the appropriate patentable method.
The source code, being a "program as such", does not meet the criterion of
going "beyond the 'normal' physical interactions", since it cannot be
directly executed. After all, read-only mode without the necessary practical
realisation via compilers or interpreters in the computer does not have any
operative effects which "go beyond the 'normal' physical interactions
between program and computer" (i.e. the extent of the reproduction of the
content only). It is also irrelevant how the source code is stored
(overwrite or read-only) or on what sort of data carrier (paper, punched
tape, floppy disk or CD-ROM),
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and in what language (machine code, higher-level programming language).
In 1999 a case of this kind ("fehlerhafte Zeichenkette"), where the
subject-matter of the claim (data carrier with program for executing the
method) had been refused by the Federal Patent Court as a "program as
such" {24}, was held by the Federal Court of Justice to be dependent on
the assessment of the underlying method and was referred back to the
Federal Patent Court for a further substantive examination {25}.
In view of the fact that a distinction can be made between an "executable
mode" embodiment and a "read-only mode" of a computer program and since,
in particular, the source code can be construed as the "program as such",
patent rights and copyright need to be mutually distinguished in
accordance with the definition of "technology" or "technical" discussed
in Part III. The reproduction of just the content of a read-only computer
instruction which is stored on a data carrier is protected by copyright.
On the other hand, the functional principle of an apparatus or a method
in its executable embodiment, i.e. the subject-matter which comprises
or activates the functions and effects described, is protected by a patent
right. The subject-matter concerned must satisfy the patentability
criteria. Purely descriptive representations, that is to say a program in
a formal language, or even the reproduction of just sequences of images,
sounds or text on a data carrier, are excluded from patent protection
because they are in "read-only mode". There is also international
consensus concerning this limitation (see the USPTO and Japanese Patent
Office examination guidelines).
This interpretation of the concepts does not constitute a restriction for
the public. The reason is that the formal description of the program run on
a data carrier, that is to say the source code, is protected by copyright.
The source code is also excluded from patent protection anyway on formal
grounds, since it does not satisfy fundamental requirements for a patent
application, namely the disclosure of the subject of an application in such
a way that the general public has the opportunity to take notice of the
subject-matter for which protection is sought (in a generally comprehensible
language) (see also Part II.). Protection for the source code under patent
law would, moreover, be of only little value since, in disputes, patent
protection can easily be circumvented by modifying the wording.
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V. Assessment of non-technical features of the invention
As already stated at the beginning, the "Kerntheorie" applied until 1978
had to be abandoned because, when the EPC entered into force, the concept
of an invention was modified so that it was then determined by the claims.
Federal Court of Justice decisions to 1978 (e.g. "Dispositionsprogramm")
on the concept of "technology" or "technical" can be cited only to a
limited extent in the present legislative environment, since they had a
different legislative basis for considering inventions. This is, however,
due less to the interpretation of the concept of "technology" or "technical"
and more to the scope of the subject-matter to which this concept was
applied. The Court's definition of "technology" or "technical" has
remained largely unchanged since the "Rote Taube" {26} decision. What has
changed, on the other hand, is the extent of protection of the patents
applied for: in other words, the subject to which the definition of
"technology" or "technical" is applied. The scope of the subject-matter
protected has been determined solely by the terms of the claims only since
1978. The subject-matter of the main claim is considered to be the
invention in its most generally claimed form (Busse, Patentgesetz, 51h
edition, Section 14 No.54; similarly the comments on Section 14 PatG in
Benkhard, 9th edition, and Schulte, 6th edition.
In its recent decisions {27}, the Federal Court of Justice has also
emphasised that the concept of "technology" or "technical" is a useful
criterion for distinguishing between patentable achievements and other
human achievements for which patent protection is neither envisaged nor
suitable. In making this distinction, the Court has consistently based
its thinking on its own definition of "technology" or "technical" and not
on the negative list in the German Patent Law (see, for example, the
"Chinesische Schriftzeichen" {28}, "Logikverifikation" {29} and "Suche
fehlerhafter Zeichenketten" {30} decisions). It has been repeatedly
emphasised that computer programs were not totally excluded from patent
protection (see, for example, "ABS" {31}), although the use of technical
means had to be a component of the solution to the problem.
As a result of developments in information processing, the system for
assessing the technical character of applications on the basis of the
solution to the problem as provided in the whole of the claim, that is to
say all the known and new features defined therein (see Parts II. and III.
above), means a considerable widening of the subject-matters that are to be
regarded as technical. The reason is that, with this system involving an
overall view, the inclusion of new non-technical features in known
technical subject-matters again yields a technical subject-matter.
Examples could be business activities running on a computer (financial
transactions) or the storage and reproduction of a piece of music using
an MP3 file. With the system described, that is to say, applying the
concept of "technical" to the subject-matter of the whole claim, such
methods cannot therefore always be ruled out using the negative list of
Section 1 (2) and (3) PatG (or Article 52(2) and (3) EPC).
- 15 -
Even reference to this negative list does not, for example, preclude a
business method as a "business method as such" if it is claimed as a
computer-implemented subject-matter. Such subject-matter belongs to a
field of technology, as was found by the EU Commission Consultation
Paper {32}. Novelty and inventive step are therefore the deciding criteria
for the patentability of computer-implemented inventions.
As already explained at the start, novelty and inventive step each have
to be assessed by comparison with the state of the art (Sections 3 and 4
PatG; Articles 55 and 56 EPC). This is done on the basis of the teaching
which is given in the whole of the claim and which constitutes the solution
to a problem that is to be formulated objectively. Establishing the state
of the art does, however, require a separation into known and new features.
The question therefore arises as to whether novelty and inventive step may
ever be established on the basis of non-technical features. To give
an example:
An umbrella which differs from the state of the art only through the
non-technical pattern on the covering ("butterflies instead of flowers")
can be considered "not new" and possibly also "not inventive" now that
an overall view is taken of an appropriate notional claim. As an umbrella,
however, it remains in general terms a technical entity which, as a whole,
also satisfies the Federal Court of Justice's definition of "technical".
To give a comparison: until 1978 it was possible to establish that the
general inventive concept arising from the state of the art merely involved
a different pattern and was therefore "essentially" not "technical" in the
sense of the Federal Court of Justice's definition. This was a logical
conclusion from the then prevailing concept of an invention.
An umbrella which differs from the state of the art only through the
non-technical pattern on its covering would have to be considered a
non-technical article in general terms under the Federal Court of
Justice's "Kerntheorie" or the "contribution approach" evolved by the
EPO. This does not seem to be a convincing conclusion.
It is, however, just as unconvincing to consider this perceptibly
non-technical pattern as a feature establishing novelty and possibly
also inventive step. In individual cases similar to the above example,
non-technical features will therefore inevitably be excluded when
assessing novelty and inventive step. Such a procedure is not without
precedent. For example, there have previously been insignificant features
in an invention, e.g. the statements of use and functional statements in a
product or substance claim. According to the established case law of the
EPO boards of appeal, any features which do not contribute to the solution
of the problem set in the description do not have to be considered in
assessing the inventive step of a combination of features {33}. The same can
be true of computer-implemented inventions, although only to the extent
that their features, either on their own or interacting with other
features, do not make a technical contribution to the state of the art {34}.
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In other words, the subject of the invention is to be examined for
patentability with all the claimed features which are technical per se
or which are based on technical considerations {35}. The objective
problem must also be included in this assessment.This no doubt also
accords with the view of the Federal Court of Justice {36}.
1 BGH GRUR 1977, 96 = Mitt. 77, 20 - "Dispositionsprogramm"
2 BGH GRUR 1981, 39- "Walzstabteilung"
3 BGH GRUR 1986,531 - "Flugkostenminimierung"
4 BGH GRUR 1999, 411 - "Sprachanalyseeinrichtung"
5 EPO GRUR Int 1999, 1053 - "Computer program product/IBM" (T 1173/97 OJ
EPO 1999, 609)
6 BGH GRUR 1977, 96 = Mitt. 77, 20- "Dispositionsprogramm"
7 BGH GRUR 1969, 672 - "Rote Taube"
8 BGH GRUR 1980, 849 = Mitt. 81, 70- "Antiblockiersystem (ABS)"
9 BGH BI. 1991, 345 - "Seitenpuffer"
10 BGH BI. 1991, 388 = NJW 92, 374 - "Chinesische Schriftzeichen"
11 BGH BI. 1992, 255- "Tauchcomputer"
12 Mitt. 2000, 293- "Logikverifikation"
13 BGH GRUR 1999, 411 - "Sprachanalyseeinrichtung"
14 BGH Case: X ZB 16/00, "Suche fehlerhafter Zeichenketten", 17 October
2001
15 Mitt. 2000, 293- "Logikverifikation"
16 Landauer, Physics Today, 44(5), 1991, 23 - 29
17 BGH GRUR 1977, 96 = Mitt. 77,20 - "Dispositionsprogramm"
18 EPO T 208/84 VICOM, OJ EPO 1987, 14 - "Computer-related invention"
19 T 1194/97 OJ EPO 2000, 525
20 BPatG GRUR 1996, 866 = Mitt. 97, 32- "Viterbi-Aigorithmus"
21 BGH GRUR 1999, 411 - "Sprachanalyseeinrichtung"
22 EPO T 0931/95 "Pension Benefit Systems", 8 September 2000
23 EPO GRUR Int 1999, 1053 - "Computer program product/IBM" (T 1173/97 OJ
EPO 1999, 609)
24 BPatG Case: 17 W (pat) 69/98, 28 July 2000
25 BGH Case: X ZB 16/00, "Suche fehlerhafter Zeichenketten", 17 October
2001
26 BGH GRUR 1969, 672 - "Rote Taube"
27 Loc. cit. footnotes 4, 12, 14
28 Loc. cit. footnote 10
29 Loc. cit. footnote 12
30 Loc. cit. footnote 14
31 Loc. cit. footnote 8
32 "The patentability of computer-implemented inventions", Consultation
Paper by the Directorate General for the Internal Market, 19 October 2000
33 OJ EPO 1984, 71 - "Low-tension switch/SIEMENS"
34 Guidelines for Examination in the European Patent Office, Part C,
Chapter IV, 2. Inventions, Programs for computers
35 For a different view, GRUR 2001 (7), 555 - 560
36 Loc. cit. footnote 14