Archive | 2011, June | (2) posts

Software inventions: The BGH confirms examination approach

Software inventions: The BGH confirms examination approach


By its judgment in X ZR 121/09 (Webseitenanzeige), the German Federal Court of Justice (BGH) recently nullified one of Siemens AG’s German patents (English-language version) for lacking technical character. The judgment can be said to belong to the same lineage as Xa ZB 20/08 (Dynamische Dokumentengenerierung), which was reported in AWA IP Review 2/2010, and X ZB 22/07 (Steurungseinrichtung für Untersuchungsmodalitäten), on which Xa ZB 20/08 relied heavily.

This new judgment once more demonstrates the German two-step approach to determining whether an invention has technical character. The two-step approach is in contrast to current practice under the EPC, which regards technical character as a monolithic – and usually rather easy – requirement to satisfy. The new judgment (see point 15) stresses that the invention both

(i) should possess technicality (“Technizität”, referring to the wording of § 1(1) PatG, “Erfindungen auf allen Gebieten der Technik”), and
(ii) has to provide instructions for solving a concrete technical problem.

An invention failing condition (ii) will not escape the exception in § 1(3), point 3 PatG (“Pläne, Regeln und Verfahren für gedankliche Tätigkeiten, für Spiele oder für geschäftliche Tätigkeiten sowie Programme für Datenverarbeitungsanlagen”).

It is intriguing to note that these provisions, which proved fatal to the patent-in-suit, are word by word identical to Art. 52(1) and Art. 52(2)(c) EPC. What makes such differing interpretations possible – and what their impact may be – is discussed in more detail in the article in AWA IP Review 2/2010.

Siemens’ patent was about a method for organizing browsing history. This is a computer-implemented invention fulfilling the “Technizität” requirement (see point 16) but does not, in the Court’s view, go beyond the normal interactions between hardware and software in a computer to such an extent that it fulfils condition (ii) (see points 22–27). Indirect advantages – e.g., that a server executing the claimed method can allow computers with simpler hardware to connect (point 25) or that the total load on the Internet may decrease a trifle (point 30) – are not accepted as evidence of a concrete technical problem being solved. Indeed, they relate to devices outside the claimed subject-matter and do not form part of its results from an objective point of view.

Between the lines, the BGH points out the weaknesses that made the Court pass this judgment. Apparently, the application leaves the skilled person with little more than conceptual ideas for carrying out the claimed steps (point 27). Also, the method relies on user data being entered by the user him- or herself and not on measured – hence potentially technical – environment variables (point 28).

Considering, as we do, someone else’s patent in retrospect, these points can certainly be seen as “room for improvement”. Done right, they would have offered fallback positions that might have saved the patent. These points also reminds us that Siemens’ application was drafted in 2001, in the days before a stable European software practice had emerged. Today, I believe few patent attorneys in this field would feel comfortable filing an application that discloses the invention only on a conceptual level.

Since the European application EP02006122 in the family is still pending, the judgment offers an interesting opportunity to compare European practice with the patenting standards of Europe’s largest economy. While the BGH judgment makes explicit reference to the German law, the EPO may reach a similar conclusion, be it by other arguments.

Anders Hansson, Patent Attorney, Awapatent

Counterfeit pharmaceuticals case settled without main hearing

Counterfeit pharmaceuticals case settled without main hearing

In April 2010 Eli Lilly and Company (“Lilly”), the manufacturer of the erectile dysfunction pharmaceutical Cialis, was informed that the Swedish customs had ceased a consignment of products marked and/or shaped in such a way that it was suspected to infringe the intellectual property rights of Lilly. The consignment was addressed to an individual, herein named G.N.

Lilly instituted action against G.N. before the Stockholm District Court, demanding that the packages, bottles of pills and brochures marked with the CIALIS and LILLY trademarks as well as the pills shaped as and marked with the trademarks should be destroyed on the expense of G.N. Further, Lilly demanded that G.N. was to be prohibited under penalty of a fine of SEK 300 000 to import, market, distribute and keep the products in stock. As basis for their action Lilly referred to several trademark registrations and presented excerpts thereof as evidence, as well as photographs of the ceased products.

Considering the material at hand and since no party requested it, the case was settled without a main hearing. The court found that G.N. has, without the permission of Lilly, brought the packages, bottles of pills, brochures and pills marked with the CIALIS and LILLY trademarks from a country outside of the EEA. The products marked are such goods for which the trademarks owned by Lilly are registered and the marks are practically identical to those owned by Lilly. The actions of G.N. constitute an infringement in the trademark rights of Lilly. The circumstance that G.N. never received or actually handled the products does not affect this judgment. Neither does it affect the possibility of imposing a prohibition under penalty of a fine. Due to Lilly´s interest of preventing further infringements in their trademark rights and considering the fact that it is imperative from a health perspective that pharmaceutical products are not put on the market without supervision the fine was decided to SEK 300 000. The products were also to be destroyed. However if G.N. cannot bear the costs of destruction, it may be Lilly who has to bear the costs.

Hanna Nilsson, Associate, Awapatent