German Federal Court of Justice raises requirements for software-related inventions to overcome exclusion from patent protection

Note This article is a contribution to the BARDEHLE PAGENBERG IP Report III/2011 discussing the most recent developments in German case law with respect to patent protection for software – and how the German approach differs from that of the EPO. Read the article as originally published at the BARDEHLE PAGENBERG website.

According to the present decision “Webpage Display” of the German Federal Court of Justice (decision of February 24, 2011 – Case X ZR 121/09 – Webseitenanzeige), software-related inventions have to pass a two-step assessment with respect to exclusion from patent protection. In this context, the German Federal Court of Justice for the first time positively identifies types of features needed for a software-related invention to overcome the exclusion.

The case to be decided in “Webpage display” related to German patent DE 101 15 895 (corresponding to US 7,296,062) which claims a method for generating a displayable presentation for relocating an information page that has been called up by a user from a homepage and which has subsequently been exited. The patent to be assessed was essentially directed to the concept of monitoring the sequence of visited (sub)pages of a complex website in order to facilitate the return of the user to a certain page of the website.

In first instance, the Federal Patent Court had argued that the claimed method was not an invention in a field of technology and was hence excluded from patent protection. The Federal Court of Justice, however, held that the claimed method indeed possessed technical character, since the claimed method steps involve networked technical devices, wherein the registering of visited internet pages and the generating of a displayable presentation constitute typical steps of processing, storing and transmitting data by technical devices (cf. decision X ZB 22/07 – “Steuerungseinrichtung für Untersuchungsmodalitäten”). In this context, the Court noted that it is irrelevant whether or not the claim explicitly recites the technical devices (server, clients), since for the person skilled in the art of programming browser software it was a self-explanatory fact that the execution of the method steps necessitates the use of computers within a network.

However, the Court also held that the claimed method is still excluded from patent protection as a computer program “as such”, as stipulated in Section 1 (3) No 3 and (4) German Patent Act. In order to overcome this exclusion, a claimed teaching – besides having to possess technical character – must further include instructions for solving a specific technical problem with technical means. In the present case, the Court noted that no modification of system components took place in the claimed method. Also the execution of the computer program used for the solution of the problem was neither found to be determined by technical facts outside the computer, no…