Joff Wild

Yesterday I reported on a blog posting from the well-known European anti-software patent campaigner Florian Mueller about a recent decision of the German Supreme Court which he said would open to the door to many more software patent grants (and litigation) in Germany. At the end of the piece I stated that if I were involved in the software industry I would be looking to get some clarificaiton on developments from a German patent attorney.

Well, I am not in that line of work, of course, but I thought I would ask a patent attorney in Germany anyway. So, I contacted Robert Harrison a Munich-based Australian who is dual qualified as a German and European patent attorney. This is how Rob sees the Supreme Court's decision and Mueller's reaction to it:

Florian Mueller compares this German decision with the pending US Supreme Court decision on business-method patents (In re Bilski) and he comments that it means that "all software ideas are now potentially patentable as long as they are innovative from a purely formal point of view". He seems to think that this represents a reversal of the trend in Germany "in which in which software patents were previously only considered valid under relatively strict criteria".

But Mueller is over-egging things somewhat. This decision certainly is not a landmark ruling setting out a major change in patent law for computer-implemented inventions in Germany. It's rather a continuation of a long line of thinking by the German courts. It is interesting because it is one of several cases in which the Federal Patent Court (Bundespatentgericht) has given applicants leave to appeal in order to clarify the law in Germany on computer-implemented patents.

In Germany, the test for whether a computer implemented invention is patentable is to consider the technical problem which the invention attempts to solve. The court confirms previous case law that an invention is technical when the invention relates to the functioning of a computer system and allows the interworking of the computer system's elements. However, the court also confirms that this does not mean that all computer-implemented inventions are per se patentable. On the contrary, it emphasises that merely using a computer program does not confer patentability.

Instead, it is the recognition of the solution of a technical problem which is solved by a programmed computer which leads to a potential patent. This is very similar to the European Patent Office's approach on patents for computer implemented inventions. - but differs somewhat from that offered by the UK courts in their Macrosan/Aerotel case.

The Federal Court of Justice goes on to state that once the technical problem has been identified, the test is to determine whether this technical solution is novel and involves an inventive step. It's not just a purely formal examination. In this case the court remitted the case back to the Federal Patent Court for further examination and review to see whether the criteria of novelty and inventive step were present.

Rob is one of the founding partnersof the London-based IP consultancy ipVA. I understand that he will be posting a fuller note on the Siemens case and its implications on the company's blog at some stage very soon. So look out for that.