What is the current state of the law on the patentability of CIIs?

Presently, according to statistics of the German Patent and Trade Mark Office (DPMA), about 10% of the patent applications filed with the DPMA are software-related CIIs.1

Under German patent law, "programs for data processing units as such" are expressly excluded from patentability pursuant to Sec. 1 (3) no. 3, (4) Patent Act (corresponding to Art. 52 (2) lit. c, (3) EPC). The fact that a data processing unit is controlled via a computer program in order to achieve a certain result is therefore not sufficient for the program to be patentable. The legislator has refrained from defining the term "as such" in more detail, so it is only in recent years that a more uniform line on this issue has emerged in case law.

The following three-step test has been established by the German Federal Court of Justice for assessing the patentability of a computer-implemented invention: (1) Does the respective teaching have technical character? (2) Is patent protection sought for a computer program for data processing unit "as such"? (3) Is the invention new, inventive and industrially applicable?

As a first step, the patentability of a CII requires the teaching of the invention to have technical character. In recent years, the Federal Court of Justice has increasingly considered the requirement of technicality to be less problematic. In this respect, it differentiates between apparatus claims and method claims. According to settled case law, any apparatus (data processing system) which is set up in a certain way in terms of programming should have a technical character.2 A method whose subject-matter is the processing of procedural steps with the aid of electronic data processing should already satisfy the technicality requirement if it serves to process, store or transmit data by means of a technical device. For the existence of the required technicality it is irrelevant whether the subject-matter of the claim has exclusively technical features or also non-technical features and which features ultimately characterise the claimed teaching.3

Since Sec. 1 (3) no. 3, (4) Patent Act expressly excludes patent protection for programs for data processing units “as such”, the claimed teaching must contain instructions beyond the technicality indispensable for patentability, which serve to solve a specific technical problem by technical means.4 Based on these considerations, the Federal Court of Justice identified the following constellations in which a computer program is not to be protected "as such" and patentability is therefore not excluded, i.e. if device components are modified or basically addressed differently; if the process of the data processing program used to solve the problem is determined by technical conditions outside the data processing unit; or if the data processing program is designed in such a way that it takes into account the technical conditions of the data processing unit.5

Finally, the technical invention must be new, involve an inventive step and be capable of industrial application. In general, the inventive step is the most difficult hurdle. The general principles apply, whereby only those features which determine or at least influence the solution of the technical problem by technical means are taken into account in the examination of inventive step.6

In comparison to the EPO practice, the EPO generally prefers a two-step model for examining the patentability of CIIs, which is characterised by the first step, whether the teaching in question is technical, and the second step as to whether the invention is new, inventive and industrially applicable. Thus, the decision-making practice of the EPO differs from that of the Federal Court of Justice in that it takes into account the exclusion criteria of Art. 52 (2) lit. c, (3) EPC within its first examination step. From the EPO’s point of view, the exclusion is therefore an integral part of the analysis of technical character. Nevertheless, the decision practices of the Federal Court of Justice and the EPO have become increasingly similar over the years, so that they correspond in large parts and lead to similar results.

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Clemens Ruebel
+49 89 212148 321

Tiffany Zilliox
Senior Associate
+49 89 212148 364