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In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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No step forward, two steps back

In its decision "Webseitenanzeige" (decision X ZR 121/09 web page display), the German Federal Court ("BGH") has delivered another decision on the patentability of computer-implemented inventions. The decision is a major disappointment to patentees, and is at odds with current EPO practice.

With this judgement, the BGH upheld a decision from the Patents Court to revoke German patent no. DE 10118595 (European equivalent EP1246078, granted in the US as patent no. 7296062). The invention related to a method of generating a graphic representation of previously visited web pages, to enable the user to return to a previous web page by selecting the presentation, i.e. without having to (repeatedly) operate the "go back" button of the web browser. The presentation was generated on a server rather than the client web browser.

The BGH applied the two-stage test from its earlier decision "Dynamische Dokumentengenerierung" (decision Xa ZB 20/08) to determine whether the invention was excluded from patentability.

This test requires examination of (i) whether the invention is a technical invention, and (ii) whether the invention resided in a non-patentable computer program "as such".

In step (i), the BGH concluded that the invention was technical by the mere presence of "typical steps of the processing, storage and transmission of data by means of technical devices".

In line with EPO practice (itself based on older German cases such as "Sprachanalyseeinrichtung", case XZB 15/98), the first step no longer represents a serious hurdle: any computer-implemented invention that involves a processor, storage means or suchlike is now considered technical.

Step (ii) involves two questions, namely whether (a) the invention solves a concrete technical problem, and (b) the solution is achieved by technical means. Technical means to solve a technical problem can reside in the following:
• A modification or a fundamentally different use of the components of a computer system.
• The execution of a computer program being determined by technical circumstances outside the computer system.
• The computer program taking into account the technical characteristics of the computer system.
These examples are taken from "Dynamische Dokumentengenerierung". However, the present decision for the first time gives the impression that these examples are exhaustive.
Even though step (ii) is specific to German practice, it previously resulted in decisions more or less consistent with the EPO approach. According to the EPO approach, only features that make a technical contribution are taken into account for assessing "inventive step". See for example T424/03 and T154/04. Not so in this case.
In the decision, individual features are rejected as non-technical because they are considered known or to reside in "mere data processing".

Technical effects were ignored
Interactions between individual components as well as possible technical effects resulting from such interaction are entirely ignored. For example, the BGH discusses the feature of having a server - rather than the client browser - generate the graphic presentation and states that this step is a mere relocation of operations from one component (client) to another (server), which is "nothing but an organizational relocation of data processing between plural network components. Even if this enabled the use of stripped down [client] computers, this would have to be seen as a measure of data processing and not the solution of a concrete technical problem" (comment in brackets and emphasis added).

Reversal of earlier case law
What the BGH appears to be saying is that data processing is non-technical as such and therefore cannot ever solve a concrete technical problem. This is a reversal of earlier BGH case law, in which it was held that data processing can indeed be technical, namely if it solves a concrete technical problem.
In any case, the BGH ignored the fact that the allocation of processing tasks to certain components is an important issue in data processing and can solve various concrete technical problems (stripping down a client computer being one example). It also matches one of the above examples of "technical means to solve a technical problem": the allocation of tasks clearly requires taking into account the technical characteristics of the computer system, for example the available processing power of client and server, the available bandwidth for data transmission between the two, etc.

Of course, whether or not the relocation of task from one component to another involves an inventive step is an entirely different matter. The BGH did not examine this.

The BGH also rejected arguments from the patentee that the invention facilitated the location of web pages.

They stated:
"It remains to be seen if the mere location and relocation of a certain information page in the internet represents a concrete technical problem. The contribution made by the method consists in the mere compilation, storage and processing of the corresponding arithmetic operations of the user using conventional data-technical method steps [übliche datentechnische Verfahrensschritte] which cannot establish patentability with a view to Section 1 Subsection 3 No. 3 of the Patents Act [exclusion of computer programs as such]." (comments in brackets added)
It is unclear why the BGH initially considered the "typical steps of the processing, storage and transmission of data by means of technical devices" to confer technical character to an invention at one stage of their analysis (see above) and then dismisses the same features as non-technical later, when it comes to the exclusion of computer programs as such. Moreover, the use of the expression "conventional data-technical method steps" appears to acknowledge the presence of (conventional) technical features.

Why the BGH did not simply examine (and dismiss) these features for (lack of) inventive step is unclear. That was the approach taken by the EPO: in the first examination report in respect of the counterpart European patent application EP1246078, a lack of inventive step objection is raised, with no objection that the invention relates to a non-technical computer program as such.

Finally, the BGH remarked:

(the advantage) "That the method can advantageously implement the dialogue between user and server does not reside in a technical field."
Again, this contradicts EPO practice. For example, in T 769/92 (General Purpose Management System/ SOHEI) the EPO held a user interface to be technical, and in T 643/00 (Searching image data/CANON), the Technical Board of Appeal held:
"An arrangement of menu items (or images) on a screen may be determined by technical considerations. Such technical considerations may aim at enabling the user to manage a technical task, such as searching or retrieving images stored in an image processing apparatus, in a more efficient or faster manner, even if an evaluation by the user on a mental level is involved." (Headnote)

Clearly these two decisions do not match the approach of the BGH.
It is hoped that the BGH will use the next possible opportunity for damage limitation and to return to the more sensible approach taken in previous decisions. For the time being, however, we recommend filing applications relating to software-based inventions with the EPO rather than the German PTO. We also recommend drafting applications in this field with a firm eye on the technical aspects. This is perhaps one of those difficult cases that make bad law (see drawing).