European #softwarepatent roundup 03/16

European software patent roundup

For all readers interested software patent-related case law, here’s the March’16 roundup:

New EPO software patent case law

Giving nicknames to business contacts: no technical contribution

EP 1 770 625 A1

Case T 2428/11 concerned an examination appeal against the rejection of European patent application No. EP 1 770 625 (“Communicating with business customers”). Claim 1 was essentially directed to a communication system with a communications nickname database associating each of a multiplicity of businesses with its communications nickname.

The idea was to use a single “nickname” for contacting a business via one of a plurality of communication means in that the nickname replaces e.g. the postal address, telephone number, fax number, mobile telephone number, or website address.

Here, the board even mentioned doubts as to the technicality of the claimed subject matter. In any case, the board concluded that none of the features of the claim makes a non-obvious technical contribution over the prior art. In doing so, the board followed the established COMVIK approach which is summarized nicely in the decision:

As set out in decision T 641/00 “Two identities/COMVIK” (OJ EPO 2003, 352), it is only technical features, i.e. those which contribute to the solution of a technical problem by providing a technical effect, that can support the presence of an inventive step. Non-technical features, i.e. those which do not make a technical contribution, may legitimately appear in the formulation of the objective technical problem.

Read the full decision here.

Gaming: Setting game parameters based on slide operations is non-technical

EP 1 671 685

Case T 1385/12 concerned an examination appeal against the rejection of European patent application No. EP 1 671 685 (“Game apparatus, storage medium storing game program, and game control method”). Claim 1 was essentially directed to a game apparatus with a new input mechanism in particular for controlling movement of an object according to the player’s operating position and a slide operation. An object of the invention was to offer the player a new sense of operation and make the game more interesting.

The Board of Appeal addressed the question whether or not the choice of coordinates that determine game parameters is technical or not. The answer was that “whilst claim 1 is not restricted to any particular game, and therefore its subject matter is not founded on any specific game rule, the Board considers that the game developer’s choice of having the y coordinate of the slide start-point set a game parameter used in game processes nevertheless represents a non-technical generic scheme for playing various games. Therefore it is excluded from patentability under Article 52(2)(c) EPC”.

As a result, claim 1 lacked an inventive step since there was no technical contribution over the prior art. Read the full decision here.

Escalator maintenance: Producing a fault log is technical, but obvious

EP 1 628 899

Case T 1746/11 concerned an opposition appeal against the revokation of European Patent No. EP 1 628 899 (“Method and device for the maintenance of a lift or escalator installation”). Claim 1 was directed to a method of maintaining a lift or escalator and included the feature that “fault log with a specification of the ascertained operating faults and the identified components is produced”.

The appellant opponent argued that this feature related merely to the presentation of information which is as such excluded from patentability. The Board of Appeal did not follow this argument but held that the displaying of information about the status of an apparatus is in principle a technical task (citing T 115/85).

Applied to the case at hand, a protocol was generated containing information about the status of the escalator (namely operating faults) and the affected escalator components, which according to the Board constitutes technical information and is based on technical considerations. The feature in question was therefore part of the examination of inventive step, but was eventually considered obvious by the Board. Read the full decision (in German) here.

New German software patent case law

Blocking remote inputs to an electronic control system: probably patentable

DE 10 2005 054 140 A1

Case 17 W (pat) 48/13 concerned an examination appeal against the rejection of German patent application No. DE 10 2005 054 140.2-53 (“Distinguishing between the origins of operating inputs in electronic control systems by means of an associated electronic code”). Claim 1 was essentially directed to a method for distinguishing between inputs in an electronic control system via a local and a remote operating element. The two operating elements are distinguished by electronic codes.

The problem underlying the invention was to provide an electronic control system which can be controlled both locally and remotely via the same user interface and in which security-relevant functions can be blocked if triggered remotely.

The Federal Patent Court held that the method was novel and inventive vis-a-vis the cited prior art. However, since the claim had been amended during the appeal procedure, the case was remitted back to first instance. Read the full decision (in German) here.

Did I miss an interesting decision?

Let me know in the comments below or email me directly at


German #softwarepatent 101: prosecution and enforcement in a nutshell

German software patents in a nutshell

This post summarizes the prosecution process of German patent applications and the enforcement of German patents. The explanations mostly apply to software-related patents as well as to any other German patent regardless of its technical field. Read more German #softwarepatent 101: prosecution and enforcement in a nutshell

European #softwarepatent roundup

European software patent roundup

While the impact of Alice on US software patents is still heavily discussed, 2016 has so far not produced any revolutionary software-related decisions by the Boards of Appeal of the European Patent Office (EPO) or the German Federal Court of Justice (BGH). The German Federal Patent Court (BPatG), however, has been quite busy. Here’s a quick roundup: Read more European #softwarepatent roundup

German software patent 101: What is a “utility model”?

What is a German utility model?

In addition to patents, there is a utility model in Germany, which is codified in the Utility Model Act (“Gebrauchsmustergesetz”, GebrMG).

In contrast to patents, which are substantively examined before grant, German utility models are registered after an examination for formal criteria only.

Since a utility model is not substantially examined prior to registration, its validity can directly be challenged as a defence argument in utility model infringement procedures. This is different from nationally granted German patents or German parts of a granted European patent, wherein the validity can exclusively be challenged in a separate nullification procedure.

With respect to patents, Germany applies a first-to-file principle so that generally any disclosure of an invention before the priority date of an application is novelty-destroying. The German utility model by contrast enjoys a six-month grace period (section 3 GebrMG) so that a public disclosure by the inventor himself or his legal successor within the last six months before the priority date is disregarded. Further, a public prior use is generally disregarded, if it occurred outside Germany.

Unlike German patents, German utility models cannot be registered for method claims (section 2 GebrMG). However, claims directed to a data carrier with a program comprising instructions may be admissible. Also, means plus function claims are admissible – for example, for a telecommunication apparatus.

Once the validity of a utility model is challenged, the question of whether the claimed invention is directed to non-statutory subject matter will also be investigated (as well as the standard questions of novelty and inventive step). Apart from the exclusion of methods, the criteria for statutory subject matter to be applied are the same for utility models as for patents.

This is an excerpt of the “Germany” chapter of “Software Patents Worldwide” by Dr. Hans Wegner and Bastian Best. Reprinted from Software Patents Worldwide, Suppl. 22, December 2015, with permission of Kluwer Law International.

Software patents in Germany: Should you file with the EPO or the German Patent Office?

Where to file a software patent?

Today, patent protection in Germany can be obtained either

  • nationally by filing a national German patent application with the German Patent and Trademark Office (GPTO); or
  • by validating a European patent granted by the EPO and designating Germany.

Whereas a national German patent application will be examined for the patentability criteria by the examiners of the GPTO, it is the European Patent Office (EPO) that examines a European patent before grant. The validation of a granted European patent in Germany is then only a formality, without any examination.

Isn’t the law unified?

The statutes in the German Patent Act applied by the GPTO and the German courts are almost identical to the corresponding provisions in the European Patent Convention (EPC). The recent interpretation of the statutes by the German courts, however, differs considerably from the case law of the EPO, although the German Federal Court of Justice (FCJ) has repeatedly stressed that its decisions concerning the patentability of software-related inventions are in line with the decisions of the Boards of Appeal of the EPO.

With a series of recent landmark decisions the German FCJ has considerably raised the bar with respect to the question which software is patent-eligible and which is not.

Therefore, it can be said that the case law of the European Patent Office (EPO) is typically more liberal in this respect than the decisions of the German Patent and Trademark Office (GPTO) and the German courts in terms of applying the harmonized provisions in the EPC and the German Patent Act. There are some exceptions, though.

So what should you do?

Generally speaking, important software-related inventions which are somewhat questionable with respect to their technical contribution should therefore be filed at the EPO, or in parallel at the EPO and the GPTO to maximize the chances of obtaining patent protection in Germany.

Of course, this is only a general rule-of-thumb answer to a general question. As each case is different, you should always seek professional advice before making a decision on your filing strategy.

In any case, keep the following in mind: When a German part of a European patent for a software-related invention, which was granted by the EPO, is later enforced and its validity attacked, it will be the German FCJ that finally decides whether the invention is patentable and whether the German part of the patent is maintained or not.

This article is based on excerpts of the “Germany” chapter of “Software Patents Worldwide” by Dr. Hans Wegner and Bastian Best. Reprinted from Software Patents Worldwide, Suppl. 22, December 2015, with permission of Kluwer Law International.

Only technical features can form an “invention” in Germany

With the decision Display of Topographic Information the Federal Court of Justice (FCJ) continued its examination methodology for …

Read more Only technical features can form an “invention” in Germany

Only the technical solution of a technical problem is patent-eligible in Germany

The decision Dynamical Generation of Documents of 22 April 2010  is one of the most important landmark decisions with regard to th…

Read more Only the technical solution of a technical problem is patent-eligible in Germany

German software patents on graphical user interfaces?

Software patents on graphical user interfaces

Patent applications on new types of GUIs oftentimes run into trouble in Germany because the examiners consider them to be presentation of information. As the avid reader will know, the presentation of information is one of the items on the list of subject-matters excluded “as such” from patent protection.

In the recent Image Stream decision (BGH Bildstrom – X ZR 37/13), however, the Federal Court of Justice (FCJ) held that the exclusion is overcome when the presentation of information serves the solution of a technical problem with technical means, thereby meeting the second hurdle of the German three-step approach. In addition, this decision is particularly remarkable because of its quite liberal understanding of the technical problem solved by the patent under consideration.

The Image Stream patent

The patent concerned the visual displaying of images of a body lumen captured by a swallowable capsule equipped with a camera. Such captured image streams comprising possibly thousands of still images can then be reviewed by medical personnel for diagnostic purposes.

Since the rate at which a human user can effectively review an image stream was said to be limited to around fifteen frames per second, the object underlying the patent was to enable a user to increase that rate without missing important information that may be present in any of the images included in the stream.

Claim 1 of the patent reads (English translation with emphasis added):

A method for displaying an image stream, the method comprising:

receiving images acquired by a swallowable capsule, the images forming an original image stream; and

displaying simultaneously on a monitor at least two subset image streams, each subset image stream including a separate subset of images from the original image stream.

Fig. 2 of EP 1 474 927 B1
Fig. 2 of EP 1 474 927 B1

Accordingly, the idea underlying the patent under consideration was to split the captured image stream into two or more subsets, e.g., a first subset containing the still images 1, 3, 5, … and a second subset containing the still images 2, 4, 6, …. Both subset image streams can then be replayed simultaneously in different parts of a monitor, which according to the patent allows for analysing the overall image stream without missing important details at a higher overall replay rate.

What the court said

The Federal Patent Court had held that the claimed subject-matter has technical character (first hurdle) and does not fall under the exclusion from patentability (second hurdle). However, the invention was found to be rendered obvious, thereby failing to overcome the third hurdle.

The FCJ followed this assessment with respect to the first and second hurdles, but reversed the Federal Patent Court’s assessment of inventive step. While the technical arguments concerning inventive step are only interesting for this individual case, the FCJ took the opportunity to give some remarkable statements concerning the exclusion of “presentations of information” from patent protection, as outlined in the Image Stream decision’s headline:

Instructions relating to the (visual) presentation of information which do not primarily focus on the conveyance of particular content or its conveyance in a particular layout but on the presentation of image content in a manner that takes into account the physical characteristics of human perception and reception of information and are directed towards making possible, improving or making practical the human perception of the displayed information serve the solution of a technical problem with technical means.

In essence, the FCJ states that the conveying of specific information – i.e., certain information content – cannot be monopolized, whereas a technical teaching for enabling a human user to efficiently percept such information is accessible to patent protection. This distinction between “what is displayed” (excluded from patent protection) versus “how it is displayed” (not excluded) appears to bring the German jurisprudence basically in line with that of the Boards of Appeal of the European Patent Office (EPO).

Importantly, however, the FCJ’s decision seems to go even further: While the German Image Stream decision appears to assign a technical effect to an improved perception of the information by the user’s mind, such a psychological effect on a user’s mind is seen at least by some EPO Boards of Appeal as “breaking the chain” of technical effects necessary to establish patentable subject-matter.

Does that help software patent applicants?

Probably yes! For the applicant of a German patent, the Image Stream decision gives room to argue that a presentation of information is indeed technical in nature when it is “content neutral” and even when it (only) takes into account the physical characteristics of human perception, which should arguably be the case in many inventions relating to graphical user interface (GUI) design.

This is an excerpt of the “Germany” chapter of “Software Patents Worldwide” by Dr. Hans Wegner and Bastian Best. Reprinted from Software Patents Worldwide, Suppl. 22, December 2015, with permission of Kluwer Law International.

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