German software patent 101: The “three-step” approach to patentability of software

TL;DR:

  • Yes, software patents are allowed in Germany if the software solves a technical problem in a non-obvious manner, wherein only the technical features are taken into account for an inventive step and the non-technical features are disregarded.
  • Pure business methods are not patentable, even when they are carried out on a computer or “on the Internet”.
  • The German PTO and courts apply a three-step patentability assessment for software inventions.

Initially, software in Germany was to be protected by copyright. However, the great deficiency of copyright protection for software is that the concepts and fundamental ideas underlying the programmed software code cannot be protected by copyright.

This is the reason why patents are more attractive for protecting the intellectual property (IP) embodied in the software. Section 1 of the German Patent Act contains the basic provisions which govern the access to patent protection. Since the Patent Acts have been harmonized throughout Europe, the same provisions can be found in other national patent acts of European countries and the EPC, although their interpretation varies.

The legal framework

Section 1 PatG reads as follows in an English translation:

(1) Patents shall be granted for inventions in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
(2) …
(3) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, games or doing business, and programs for computers; (d) the presentation of information.
(4) The provisions of paragraph 3 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which protection is sought for such subject-matter or activities as such.
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According to the current German jurisprudence, there are three hurdles for patents on software-related inventions in this provision:

The German “three-step” approach to patentability

  1. First, there always has been, and most likely always will be, a common understanding in Germany (and Europe) that the term “invention” in paragraph (1) of the above provision implicitly requires an invention to be a “technical” invention.
  2. The second hurdle is the explicit exception of computer programs and algorithms from patentability. The exception is, however, restricted to computer programs and algorithms “as such“. These first and second hurdles can be said to constitute absolute hurdles, in that they are to be assessed independent of the prior art.
  3. Finally, the third hurdle stipulates that the relative requirements of novelty and inventive step can be based only on technical aspects that distinguish the invention from the prior art.

The German Federal Court of Justice has, over the years, derived three criteria from the above-cited legal provision which are regularly applied by the German Patent and Trademark Office and the courts when assessing whether a software-related invention is eligible for patent protection:

1. Technical character

The invention as defined in the independent claims must have a technical character. This first criterion can, at least to some extent, be met by suitably drafting the claims of a patent application.

In particular, it is to be assessed independently from the standard criteria of novelty and inventive step. Adding known technical features to a claim or drafting a claim as an apparatus claim or a claim to a “computer-implemented” method is typically sufficient to meet this requirement.

Recent German case law even held that a claim directed to a method for processing data in networked technical devices has technical character even if the devices are not explicitly recited in the claim, provided that it is apparent to the person skilled in the art that the execution of the method requires the employment of such technical devices.

2. Statutory exclusion

More important is the second criterion, which states that even if the invention has technical character, it may still fall under the exclusion from patentability for being a computer program “as such”. The exclusion from patentability can be avoided if the invention includes instructions for solving a specific technical problem with technical means.

According to recent German jurisprudence, such a solution of a specific technical problem with technical means is present if system components are modified or used in a fundamentally different manner, or if the execution of the software is determined by or takes into account technical facts outside the computer.

3. Technical contribution

The third criterion concerns the “technical contribution” of the invention. Here, the objective difference of the claimed invention to the closest prior art is to be analysed. Only those differences that involve technical aspects will be taken into account for assessing the inventive step of the invention, whereas non-technical features are disregarded.

Where does that take us?

The three above-mentioned criteria for the patentability of software-related inventions have had a changing importance in the decisions of the German Federal Court of Justice over the past years. Currently, the second and third criterion (exclusion from patentability as a computer program “as such” and “technical contribution”) seem to be the real hurdles to overcome.

Remarkably, the above-outlined German three-step approach differs fundamentally from the two-step approach developed by the Boards of Appeal of the European Patent Office (EPO) for assessing the patentability of software-related inventions. According to the EPO approach, an invention having technical character automatically overcomes the exclusion from patentability, and the only remaining test is that of novelty and inventive step, wherein only features providing a technical contribution are taken into account.

On the contrary, under the German approach it may well be that an invention is considered to have technical character, but still falls under the exclusion from patentability as a computer program “as such”.

tl;dr: Software patents are allowed in Germany if the software solves a technical problem in a non-obvious manner, wherein only the technical features are taken into account for an inventive step and the non-technical features are disregarded.

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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.

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