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Software Patent

Flooding Germany with Software Patents?

by admin on 23 May 2010

#alttext#There’s a blog entry over on the FOSS patents blog from software patent campaigner Florian Müller in which he comments on the German Federal Court of Justice’s (Bundesgerichtshof)Dynamische Dokumentengenerierung” (=dynamic document generation) decision in a Siemens application on a method for producing a document display. Florian compares the German decision with the pending US Supreme Court decision on business-method patents (In re Bilski) and he comments that the decision means that “all software ideas are now potentially patentable as long as they are innovative from a purely formal point of view.” He seems to think that this represents a reversal of the trend in Germany “in which in which software patents were previously only considered valid under relatively strict criteria”.

The case is interesting since it is one of several cases in which the Federal Patent Court (Bundespatentgericht) has given applicants leave to appeal in order to clarify the law in Germany on computer-implemented patents. Last year the same German Federal Court reviewed their current case law in the “Steuerungseinrichtung für Untersuchungsmodalitäten” (commented in detail on German Wikipedia at this link. The Federal Patent Court is clearly trying to understand the boundaries of the exclusion of patents for computer programs, as codified in Sec. 1, Para. 2, No 3, of the German Patent Act – latest copy in English found here.#alttext#

Both the new Siemens decision and the older one from 2009 follow the earlier case law. The test for whether a computer-implemented invention is patentable is to consider the technical problem which the invention attempts to solve. The court confirms its 1991 case law (“Seitenpuffer“) that an invention is technical when the invention relates to the functioning of a computer system and allows the interworking of the computer system’s elements. However, the court’s latest decision clarifies that that does not mean that all computer-implemented inventions are per se patentable. On the contrary the court emphasizes that merely using a computer program does not confer patentability. It is the recognition of the solution of a technical problem which is solved by a programmed computer which leads to a potential patent.

This is very similar to the European Patent Office’s approach on patents for computer-implemented inventions. – but differs somewhat from that offered by the UK courts in their Macrosan/Aerotel case.

The Federal Court of Justice goes on to state that once the technical problem has been identified, the test is to determine whether this technical solution is novel and involves an inventive step. It’s not just a purely formal examination. In this case the Court remitted the case back to the Federal Patent Court for further examination and review to see whether the criteria of novelty and inventive step were present.

This decision certainly is not a landmark ruling setting out a major change in patent law for computer-implemented inventions as suggested by the FOSS patents blog and picked up by Peter Zura’s 271 blog here and the techrights blog here. It’s rather a continuation of a long line of thinking by the German courts.

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One of our interests on Tangible IP is the never ending story of software patents. Just to recap: the European Patent Office is currently considering the degree to which computer-implemented inventions are patentable. On the other side of the Atlantic the US Supreme Court has head arguments in the re Bilski case and we’re waiting for a decision.

titre_tribunal_grandeinstance.jpg I’m indebted to Pierre Breese, the author of the French-language blog “Chronique de la propriété intellectuelles” for his entry mentioning a decision issued by the Parisian TGI patent court. It concerns the validity of the European Patent EP 1 182 581 filed by the French company Exalead. The patent is directed towards a search engine.

The EPO Examiner initially rejected the patent on the grounds that it was not possible to determine the technical problem which was to be solved by the invention. The Applicant’s attorneys responded that the technical problem has been clearly described in the description and that this problem was solved by the claims. The EPO granted the patent.

Exalead-logo.gifExalead then proceeded to sue another French company Sinequa who were providing a search engine service to the French Ministry of Culture and also to the French Senate. Sinequa argued that the patent was invalid. As part of their defence, Sinequa filed an identical patent application with the French Patent Office INPI who proceeded to reject the patent application on the bases that the claims were directed to a series of theoretical and abstract steps which included no technical means thus rendering a technical nature to the claims. The INPI Examiner concluded that the addition of the search engine into the claims was insufficient to confer a technical nature to the claims and thus the claims concerned a series of mental steps. The French court revoked the patent in France on this basis.

There are several points of concern in the decision. The French court seems to have adopted INPI’s arguments which were in direct contradiction to the decision of the European Patent Office on granting this patent. We don’t have any knowledge about the detailed arguments submitted to the court or the detailed reasoning of INPI but to merely revoke a granted European Patent on grounds that seemed to have been raised and overcome in the European granting procedure is stepping into dangerous ground.

Even more intriguingly is that there was a second patent application pending in France which had been filed by Exalead. Patrice – the author of the original blog entry – noted that this second (identical) patent application was not objected to by INPI.

Business and investment decisions can sometimes rest on the validity of IP rights. It’s clearly correct to have a review process to ensure that incorrectly granted patents can be revoked. It’s disturbing that a granted patent can be revoked on issues that were (apparently) considered during the patent prosecution. Without knowing the history of the case in more detail, it’s not clear whether the initial examination at the European Patent Office was not carried out with the usual degree of care – or whether there are stronger arguments for revoking the case that only came out during the French proceedings but have not found their way into the court’s decision. It would certainly have been helpful to understand the reasons for the revocation in more detail in order to allow businesses to find the boundary between a patentable computer-implemented invention and an unpatentable software process.

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