Can Software Be Patented?
Dr. Niels Hölder, Axel Stellbrink and Rainer Viktor, Vossius & Partner Patent Attorneys and Attorneys-at-Law, Munich
You should consider protecting your software by a patent
Despite rumours in the scientific community software can be protected by patents, if it involves a technical character, such as a technical effect, a technical problem to be solved, technical features or considerations. The advantages and prerequisites of patent protection for software are briefly discussed in the following.
Why patent protection?
The economic significance of software and its development in all industrial areas is obvious. Software is protected as a "work" under copyright 1. So why should it be patented? Copyright has two substantial disadvantages in comparison to patents: first, copyright only protects its owner from having the work being copied, i.e. from having someone making copies of the original. To the extent somebody has developed his software independently of the original, copyright is of no help. While it is, of course, rare that someone writes, all on his own, the same piece of music or the same novel as someone before him2, in software cases, it may well be that different persons or groups working on the same problem may end up with at least similar solutions. In contrast to copyright, a patent protects its proprietor against others making use of the invention even if they have made the same invention on their own, unless they have published or used the invention before the priority date. The second disadvantage of copyright is closely related to the first: copyright generally protects the form of a work, not its meaning or its underlying ideas. In other words, where new software is based on specific ideas, anyone can in principle use these ideas to create his own piece of software as long as he does not copy the software code.
Patents are granted for new and inventive technical inventions, which can be industrially applied3. There is no doubt that software can be new and inventive and that software can be industrially applied. But is software also a technical teaching? From the very beginning, software algorithms were considered as non-technical, purely mental products like a mathematical proof or rules for games. For that reason, computer programs are in general excluded from patent protection4. On the other hand, it cannot be denied that there is a need for software patents. As a compromise, the exclusion from patentability only applies to computer programs “as such”5. This limitation is in fact an important one and demonstrates that the legislators did not want to totally exclude all computer programs (software) in general from patentability6.
The problem of patentability of software can be approached from two directions. The European Patent Office (EPO) being responsible for European Patents that can be validated in 31 member states and 5 extension states determines the scope of the exclusion by interpreting the term "as such". In contrast, the German Federal Supreme Court ("BGH") being inter alia the highest instance for rulings in German patent matters starts off by looking at the technical character of the software-related invention. As will be shown, both lines of argument lead to similar results. The more fundamental approach of the BGH shall be outlined first.
1 §§ 2(1) No. 1, 69a et seq. of the German Copyright Act.
2 Where two works are identical, the defendant is prima facie assumed to have copied it unless he can prove his independent creation.
3 Article 52 (1) of the European Patent Convention ("EPC") and § 1(1) of the German Patent Act ("GPA")
4 Art. 52(2) EPC/§1(2) No. 3 GPA.
5 Art. 52(3) EPC/§1(3) No. 3 GPA; when the EPC was drafted it was impossible to find a consensus on how to define what an "invention" is. Therefore, a catalogue is defined of subject-matters, which are not regarded as in-ventions because they are considered as not being of a technical nature (Art. 52(2) EPC). Although this is not explicitly stated in the EPC and there is also no definition in the EPC of what "technical" exactly means, it is commonly understood that inventions can only be protected under patent law if they have such a technical na-ture.
6 In 2002, the EU-Commission had proposed a directive on the patentability of computer-implemented in-ventions (COM/2002/92 final) in order to harmonize the law and the practice in the EU-member states. The draft basically reflected the case law of the Board of Appeals of the EPO. The European Parliament – obviously under influence of open source interest groups – considerably tightened the requirements for software patent protection and finally rejected the whole directive in 2005. As a consequence, the question of patentability of software is still dealt with by the EPO and national law according to the principles set out below. Ironically, the European Parliament, by rejecting the (amended) draft directive, perpetuated patent protection for patents rather than re-stricting it.
German Software-Related Patents
In the first landmark decision Tauchcomputer ("Diving Computer")7, the patent application related to a device for indicating the total surfacing time in dependence of the dive depths and times by operating a depth gauge, timer, data memory, evaluation and logic stage, converter or indicator in accordance with a given method of calculation (program or algorithm). The BGH confirmed that this teaching was technical even though it contains non-technical features. The Federal Supreme Court first analyzed the problem to be solved by the patent. This problem consisted in making a precise record of the dive and indicating the corresponding decompression conditions so that the optimum decompression for each dive is obtained and the diver is completely and exactly informed about the decompression conditions. When examining the subject matter of the invention for its technical character, the Federal Supreme Court rejected the view that the technical means mentioned in the patent (the depth gauge, the memory, the converter and the indicator) only served as a basis for the particular way of evaluating known dive tables, which forms the gist of the invention. For analyzing the subject matter of the invention, all of the technical means must be taken into consideration. The BGH stated that the patented teaching defines a close relationship between the program and the technical means; for examining the technical character, it was not essential which of these features are known and which are new. The Federal Supreme Court saw a technical teaching residing in the fact that the operation of the mentioned technical means according to a specific computing rule makes it possible to automatically display measured variables determined by means of measuring devices in the indicator without involvement of human intellectual activity.
The patent application underlying the decision Logikverifikation ("Logic Verification")8 related to a method for hierarchic logic verification of VLSI circuits wherein a hierarchic layout circuit acquired from the physical layout of the respective VLSI circuit using an extraction procedure is compared to a hierarchic logic plan circuit defined by logic plan. The BGH ruled that if the suggested solution relates to an intermediate step in the process which ends with the production of (silicon) chips, this suggested solution cannot be excluded from patent protection, on the grounds that – apart from the processes running in the used electronic computer as directed – it renounces the direct use of controllable natural forces and aims at enhancing the possibility of producing suitable components in a different way by findings based on technical considerations. This is a remarkable case because the BGH, in deviation to its prior case law9, considerably liberalized the case law of the Federal Supreme Court regarding computer-related inventions by confirming that technical considerations may lend a technical nature to the invention as required for patentability. Moreover, the Federal Supreme Court explicitly stated that the term “technical” according to patent law is not static and may undergo changes as far as the technological development and an effective patent protection adapted thereto require such changes.
In the decision Sprachanalyseeinrichtung (“Language analysis apparatus”)10, the case law on computer-related inventions is even more liberalized: the patent application related to a "language analysis apparatus" which comprised inputting means, dictionary means, grammar means, syntax recognition means and dialogue means, characterized by means to assess possible relations between the words and a means to choose preferred (most likely) relations.
The BGH stated that a computer which is configured in a specific way as regards its software is of a technical nature and that this is also true if texts are processed on the computer. The BGH further said that for the invention to be technical, it is irrelevant whether a (further) technical effect is achieved with it, whether the art is enriched by it or whether it contributes anything to the state of the art. The BGH even considered it as irrelevant whether or not a human interferes in the flow of the program to be performed on the computer.
In its decision “Suche fehlerhafter Zeichenketten” (“Detection of error strings”)11, the BGH however clearly pointed out the limitations of patentability. The patentee had been granted a patent relating to a method for identifying error strings in a digitally stored text by comparing the frequencies of occurrence of a correct string and a computer generated error string and by deciding on the basis of such comparison whether the computer generated error string is the error string to be detected. The patentee had further claimed a storage media which is suitable for being used in applying the patented process, which claim had however been rejected. Although the BGH did not generally rule out such a "computer program claim", it stated that even the teaching of the granted method claim lacked any technical character12 and that it could not become patentable by being stored on a storage media.
In its last published decision on computer-related inventions13, the BGH finally confirmed the admissibility of "computer program claims" directed at the storage media containing the claimed software provided that the software-related invention itself is technical (in the case, the "actual" invention related to a method for granting access to a control unit). Such a "computer program claim" offers efficient protection, because it enables the patentee to prevent others from manufacturing, e.g., CD-ROMs or DVDs containing the program; such protection is not conferred by a mere method claim because the method itself is applied by the end-user. The distribution of the program per se may only be persecuted as indirect infringement, which to some extent offers less protection14.
7 GRUR 1992, page 430 (English translation: OJ EPO 1993, page 250).
8 GRUR 2000, page 498.
9 Chinesische Schriftzeichen" ("Chinese Charakters") GRUR 1992, 36.
10 GRUR 2000, page 1007.
11 Mitt. 2001, page 553.
12 The BGH did however not revoke the patent as granted because in deciding on the patentee's appeal against the decision of the Federal Patents Court, the BGH could not overrule the Patent Court's decision to the pat-entee's disadvantage.
13 "Computerprogramm Anspruch" ("Computer Program Claim"), Mitt. 2006, 217.
14 For example, only distributing and offering in Germany for use in Germany is prohibited (not: manufac-turing); further, it is difficult to substantiate a claim for damages for indirect patent infringement.
European Software-Related Patents
As mentioned above, the EPO determines the patentability of software related inventions by interpreting the term "as such" in Article 52(3) EPC. In this respect, a number of decisions of various Technical Boards of Appeal have been published. The patent underlying the decision “Computer-related invention/ VICOM”15 deals with a method and apparatus for digitally processing images in the form of a two-dimensional data array and is directed to a specific convolution technique using an operator matrix. When examining whether the invention related to a mathematical method or a computer program as such (which would be non-patentable), the Board saw the basic difference between a non-patentable mathematical method or algorithm and a patentable technical process in the fact that a mathematical method or a mathematical algorithm is merely carried out on num¬bers and provides a result in numerical form where¬as, if a mathematical method is used within a technical process, that process is carried out on a physical entity, in the specific case a stored image, by some technical means implementing the method and provides as its result a certain change in this physical entity.
In the decision “Controlling pension benefits system/PBS PARTNERSHIP”16, the patent application related to a method and to an apparatus (in other words, a computer running a program for applying the method) for controlling a pension benefits program, for which a patent was granted in the US, following the famous decision State Street Bank & Trust Co vs. Signature Financial Group Inc. Claim 1 was, apart from various computing means mentioned in that claim, directed to a "method for controlling a pension benefits program by administering at least one subscriber employer account". The Board took the position that all the features of this claim were steps of processing and producing information having purely administrative, actuarial and/or financial character. Processing and producing such information are typical steps of business and economic methods. According to the Board, the individual steps defining the claimed method amounted to no more than the general teaching to use data processing means for processing or providing information of purely administrative, actuarial and/or financial character, the purpose of each single step and of the method as a whole being a purely economic one. In contrast, the claim for the apparatus, which simply put was a computer running a program for applying said business method, implied physical features (namely the hardware) and was thus not principally excluded from patent protection. However, in examining the inventive step of such "apparatus", only the technical features are considered (i.e., not the business method to be applied by the computer system). As the computer system could have been programmed by any software programmer knowing the (non-patentable) method, no inventive technical contribution was considered to have been made.
These findings were confirmed in the decision Auction Method/HITACHI17 concerning a computerised auction method, to a corresponding computerised auction apparatus, and a computer program. In that case, even the method claim was considered technical because it also included features concerning the hardware on which the program was running. As in the PBS PARTNERSHIP decision, however, these technical features were not capable of constituting an inventive step.
The two decisions Computer program product/IBM18 liberalize the case law of the EPO regarding computer-related inventions.
In both cases the patent applications were directed to a "computer program product" stored on a computer readable storage medium, and the reasons for the decisions are to a large extent identical. In a nutshell, the Board held in both decisions that a computer program product is not excluded from patentability if, when being run on a computer, it produces a further technical effect which goes beyond the “normal” physical interactions between program (software) and computer (hardware). The Board argued that the expression “as such” as used in Article 52(3) EPC indicated that programs shall be excluded which are considered to be mere abstract creations, lacking technical character. Further, the Board stated that the “technical character” could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where said further effects have technical character or where they cause the software to solve a technical problem, the invention may be patentable. The Board pointed out that a computer program product which (implicitly) comprises all the features of a patentable method (for operating a computer, for instance) was therefore in principle not excluded but that the patent claim must comprise all the features which are required for the patentability of the method which the program is intended to carry out when loaded into a computer, which computer constitutes an apparatus carrying out the method.
Under the EPO case law, in summary, a software-related invention can be patented if it brings about a (further) technical contribution, which may lie either in the technical problem solved by the claimed invention, or in the technical considerations concerning particulars of the solution of the problem, or in the technical means constituting said solution, or in the technical effects achieved by said solution.
15 T 208/84.
16 T 931/95.
17 T 258/03, OJ EPO 2004, page 575.
18 T 1173/97 and T 935/97.
Conclusion
Although the BGH and the EPO approach the question of patentability of software related inventions from different starting points, they end up with similar results. At the end of the day, the term "as such" found its way into the EPC (and, subsequently into the GPA) because no general definition of a technical invention could be found. However, the Federal Supreme Court has not only modified its former restrictive position and has approached the case law of the EPO. The BGH has, with respect to computer program products, lately even taken a position, which is more liberal than the EPO's. As a consequence, a greater part of the computer- and software-related inventions should be patentable in Germany in the future, even though it may take some time for the practice of the examiners of the GPA being adjusted to the case law of the BGH.
When drafting the patent claims, applicants should take great care to make sure that the technical problem to be solved by the invention or the technical considerations underlying the invention are sufficiently reflected in the claims and in the description.
