In the past two years we have seen a number of quite interesting decisions of the German Federal Court of Justice (Bundesgerichtshof; BGH) dealing with patent-eligibility of software-related inventions.

The first decision in the row was X ZB 22/07 („Steuerung für Untersuchungsmodalitäten“, “Control of Examination Modalities”) of 20 January 2009, in which the BGH analysed the circumstances under which an embedded software represents statutory subject-matter (see comments). In this decision the BGH sketched a two-step approach to examine whether or not an invention is sufficiently “technical” to qualify for patent eligibility:

  1. Is the subject-matter a “technical invention” as required by § 1 I PatG ?
  2. Does the invention fall under the exclusion of a “computer programs as such” as requited by § 1 III No. 3, IV PatG ?

An additional third step completes the examination scheme:

  1. Do the technical features render the invention novel and inventive over prior art?

Regarding step 1, the BGH found that already the steps of processing, storing and transmitting data by a technical apparatus renders a claim sufficiently technical to meet the requirement of § 1 I PatG.

Regarding step 2, the BGH found that a claim also requires instructions that are capable of solving a technical problem by technical means to overcome the exclusion of § 1 III, IV PatG.

Regarding step 3, the BGH found that upon examining novelty and inventive step, the focus must lie on the claimed solution of a technical problem, while non-technical features may only be considered if they contribute to the technical solution.

This approach reminded many experts – including myself – of the EPO Boards of Appeal’s two-step approach for examining technical character (the so called extended problem-solution approach), which is why it was assumed that this decision may represent a turnaround of the BGH case law as to assessing technical character of an invention towards that of the Boards of Appeal of the European Patent Office. The EPO’s approach, which meanwhile has been confirmed by the Enlarged Board of Appeal (cf. opinion on referral G 3/08 of 12 May 2010), consists of a first, a-priori step assessing technical character of a claim without considering prior art and a second, a-posteriori step considering prior art within the framework of examination of novelty and inventive step (cf. T 258/03, brochure “Patents for Software?“, OJ EPO 11/2007, p. 504 ff. and Examination Guidelines C IV 2.3.6).

After X ZB 22/07 the BGH issued a number of confirming decisions, e.g. Xa ZB 20/08 (“Dynamische Dokumentengenerierung”, “dynamic document generation”) of 22 April 22 2010 (see comments), Xa ZR 4/07 (“Glasflaschenanalysesystem”, “glass bottle analysis system”) of 4 February 2010 (see comments), and X ZR 47/07 (“Wiedergabe topographischer Information”, “reproduction of topographic information”) of 26 October 2010 (see comments), whereas the headnotes of “Dynamische Dokumentengenerierung” (Xa ZB 20/08) are noteworthy:

(a) [relating to above step 1] A method that involves the direct interaction of the elements of a data processing system [e.g. in a client/server scheme] is always of technical nature, independent on whether the form in which the method has been filed originally is characterized by technical instructions. 

(b) [relating to above step 2] Such a method is not excluded from patent protection as a computer program [as such] if [...] the execution of a data processing program being used for solving [a specific technical] problem is determined by technical factors outside the data processing system, or when the solution lies precisely in the fact that a data processing program is implemented to take the technical constraints of the data processing system into consideration.

The same holds for (parts of) the headnotes of “Wiedergabe topographischer Information” (X ZR 47/07):

(a) [relating to above step 2] The subject-matter of a method related to the reproduction of topographic information using a technical device is not excluded from patent protection according to Art. 52(2) c, d EPC, if at least one aspect of the claimed teaching solves a technical problem.

(b) [relating to above step 3] Upon assessing inventive step, only those instructions are to be considered that determine or at least influence the solution of the problem by technical means.



The latest decision confirming this approach was issued in the second-instance nullity case X ZR 121/09 (“Webseitenanzeige”, “Web Page Display”) of 24 February 2011, relating to a method for re-locating a web page (via deep linking), which a user has previously visited via the home page (i.e. an entry page) of a website (see US counterpart application US 2002/143895 of the underlying Germany patent DE 101 15 895 C1) by registering a user upon visiting the home page, registering the web pages visited by the user, and generating a displayable presentation visually identifying the sequence of visited web pages.

A fairly straightforward way of implementing this teaching disclosed in the patent involves a clinet-sided registration software having access to (web) server-sided cookies that register users and the deep links of the visited web pages.

In the first-instance nullity action the Federal Patent Court (Bundespatentgericht, BPatG) revoked the patent due to not relating to a technical teaching, since registering a user and presenting the visited web pages only relates to instructions of general nature, that do not solve a specific technical problem, as required by § 1 III, IV PatG (above step 2). The Patent Court added that the tacit assumption that the claimed teaching is implemented on a computer or that the usability of a computer is improved by a graphical representation of the user’s internet page visits does not qualify for patent protection.

In the second instance, the Court of Justice confirmed the Patent Court’s decision by referring to the above-cited earlier decisions. The headnotes read:

a) In case of inventions relating to devices and methods (programs) for electronic data processing it is to be determined initially, whether at least one aspect of the object of the invention lies in the technical field (§ 1 I PatG). Thereafter it is to be checked whether this object merely relates to a computer program as such and is therefore excluded from patent protection. The exclusion provision does not apply if the examination reveals that the teaching involves instructions that serve to solve a specific technical problem by technical means.

(b) A method serving for executing, by data processing, method steps in technical devices being connected in a network (servers, clients) comprises the “technicality” required for patent eligibility even if theses devices are not specifically mentioned in the patent claim.

The headnotes clearly and unambiguously confirm the above-sketched “new” German two-step approach to assessing patent eligibility of software-related inventions.

According to this – meanwhile established – scheme, the Court of Justice found that the claimed teaching met the “technicality requirement” according to § 1 I PatG (above step 1), since the claim covers the implementation of the method on a client/server system, as it is implicitly assumed by a person skilled in the art. The claimed method, however, does not overcome the exclusion of computer programs as such according to § 1 III, IV PatG, since it does not constitute a solution of a specific technical problem by technical means (above step 2). This is because neither the registration on the server nor the use of cookies aims to modify or addressing device components in a fundamentally different way, as required by the decision Xa ZB 20/08 (“Dynamische Dokumentengenerierung”). Just as little does the method consider technical constraints, because it is limited to only gathering, storing, and preparing information about a user’s internet behavior derived solely from the user input.



By this decision, the German two-stage approach to examination patent-eligibility of software-related inventions can be considered as established. Even though it resembles the corresponding EPO approach, it is not identical with it, since above step 2 (solving a technical problem by technical means, § 1 III, IV PatG) represents an additional step as compared to the EPO approach. Step 2 is, like step 1, an a-priori step not considering prior art. It thus represents a kind of coarse screening (“Grobsichtung”) to enable that only such claims are examined as to their novelty/inventiveness (above step 3) that go beyond trivial technical features.

This difference between the German and the EPO approaches might be best illustrated by the fact that a pure business method implemented on a conventional computer or computer network would in Germany be excluded as a “computer program as such” without even considering prior art, while the EPO would rejected this method for lack of inventive step since its differences over prior art only involve non-technical features.

In Germany, applicants of software-implemented methods will now be on the safe side as regards technicality issues,  if the invention is claimed within an embedded system framework, i.e. as a method controlling a technical apparatus or collecting, evaluating and processing (technical) data by means of a technical apparatus.

The recent development of case law in Germany is to be considered positive for applicants of software inventions, as it overcomes the earlier investigation of the individual case and thus creates legal certainty due to an easier-to-understand and thus easier-to-adopt examination systematics.

(Photo (C) 2005 by Max Braun, via Flickr under a CC license – it shows a plaque marking the offices in the CERN institute, where the world wide web emerged from a hypertext project around 1990)
About The Author

Volker 'Falk' Metzler

European Patent Attorney, German 'Patentanwalt', European Trademark and Design Attorney, Computer Scientist, PhD, IP Blogger, Father of Two, Mountain Enthusiast

One Response to German Federal Court of Justice Confirms New German Approach To Software Patent Examination (BGH X ZR 121/09)

  1. Gibus says:

    Hopefully the UK courts don’t (yet?) have recourse to such a sophistry to illegitimately allow software patentability. So does French courts, but who cares about anything else than DE & UK when it comes to patent case-law?

    Btw, I’ve written a thorough analysis of EBoA opinion on referral G 3/08 (sorry in French only)