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Introduction

The DPMA (DE-PTO, German Patent and Trade Mark Office, in charge of industrial property rights such patents, utility certificates, topographies, trademarks and design certificates) explains the basics of patents and other industrial property rights.

• DPMA – information for novices (German)
• DPMA – what can be patented, what can't? (German)
• DPMA – industrial property: protection of computer programs (German)

  Here the DPMA describes from its viewpoint the current practise concerning "program-related inventions" in Germany.

  Please note in particular the reasoning about the "technical character of the program-related invention". The notion "technical character" occupies a central position in the discussion about software patents.

  From this reasoning it can be understood that the notion of "technical invention" is not regarded as a fixed anchor (any longer). The legal regulations have been supplemented – or rather, as some critics point out, replaced – by interpretation and case law. The German Federal Court (BGH) writes in its "language analysis device" decision of 2000: "The concept of engineering/technicity cannot be unequivocally and bindingly determined".

The Patent Server (German) of the German Ministry of Education and Research (BMBF).

Quotation (translated) from BMBF Patent Server regarding the possibilities of patenting "software-related inventions":

For all who are involved in engineering developments that make use of software practical hints about the scope of patentability in software-related inventions can be obtained from the "Software Patents" brochure which is offered for download here.

• Software Patents brochure from the BMBF patent server (German, PDF, 136 KB)

Don't be surprised: even though this is an internal brochure from Siemens, it does come from the indicated URL on the BMBF Patent Server. The BMBF seems to be endorsing the view of Siemens. Accordingly, for the patentability of software it is enough if "technical considerations" were necessary (besides novelty, inventive step etc). Based on such a soft criterion, any software can be patented. A patent attorney who is unable to point out "technical considerations" in a patent application would certainly not be worth his money. Please examine this yourself based on the core statements of this brochure.

The core statements of the "Software Patents" brochure from the BMBF Patent Server are (p. 2 ff translated):

"The attitude of most of the important patent offices – US, Japanese, European, German – has however changed so dramatically during the last 10 years, that nowadays difficulties in patenting software are encountered only rarely. This has been facilitated in particular by an adequate approach for determining the "technical character" of inventions.

Thereby an invention is technical – and thus patentable – if at least one of the four following questions can be answered affirmatively

Question 1: Does the invention influence a physical property of a device

Question 2: Does the invention cause a technical effect?

Question 3: Is there a technical task to be solved?

Question 4: Were technical considerations needed?"

Example for "technical charakter": You may ask what could be technical to elements of user interfaces on the computer screen. For patent EP 0 689 133 a patent professional explained it to the author as follows: Technical to it is the "economical use of the limited resource area on the computer screen."

The European Commission has presented on 2002-02-20 a proposal for the "patentability of computer-implemented inventions". This proposal and its preparations – which have been running since 1997 without much attention being paid to them by software developing professional circles – have sparked off a debate about software patents.

• European Commission: Patentability of Computer-Implemented Inventions
• European Commission: frequently asked questions regarding the proposal

The text says: "What are the main differences between the approach of the proposed Directive and the situations in the US and Japan? The main difference lies in the requirement for "technical contribution". Japanese law does not have this as such, but there is in Japan a doctrine which has traditionally been interpreted in a similar way: the invention has to be a "highly advanced creation of technical ideas by which a law of nature is utilized"." That sounds reassuring, doesn't it? The "technical contribution" of this directive proposal seems to be linked to the classical concept of technical invention as a problem solution involving controllable forces of nature.

However, the reasoning in the "Explanatory Memorandum" of the directive proposal Page 7, Section "The Current Legal Situation ... Fundamental Requirement of “Technical Character”" sounds quite different, Quotation: "With regard to what computer-implemented inventions can be said to have "technical character" the conclusion to be drawn from the recent "Controlling pension benefits system" case is that all programs when run in a computer are by definition technical (because a computer is a machine), and so are able pass this basic hurdle of being an "invention"." Thus, what remains is novelty and inventive step. The "technical character" becomes an empty word without any limiting meaning. And evidently it must be, because the Directive Proposal intends to oblige all European jurisdictions to follow the EPO's recent case law.

Critics of the directive proposal are concerned that the progressive erosion of the concept of technical invention will create the same trouble with software and business methods as we have been seeing in the US, as far as that is not the case already.

• European Commission: Directive Proposal of 2002-02-20

The directive proposal with its 11 articles is only 3 pages long (p. 19-22). It is very much worth reading attentively. The concept of technical invention ("technical contribution", "field of technology") is formulated in such a way that after entry into force the patent offices and courts can no longer refuse to patent any new software idea in Europe (novelty, inventive step e. g. also required).

• Danish EC presidency: so-called "compromise proposal" dated 2002-09-23 (PDF, 38 KB)

Unfortunately this proposal for changes doesn't make any contribution to solve problems with patent claims that are too broad, too trivial or non-technical. It seems that frequent use of the word "technical" and clever remarks that look restrictive when glancing through the document should give the impression that it limits patentability. This doesn't withstand any examination. Nothing is won if the virtually meaningless term "technical" (see above) is repeated several times. Please note our e-mail with critical remarks addressed to the German Ministry of Justice, the remarks of FFII, and the press release of DIHK dated 2002-10-04.

It is very concerning that now additional claims regarding programs shall be allowed by Article 5, 2. So there is the possibility to claim patents on program text or program code on data carriers (e. g. CD, floppy disk) or on servers in the Internet e. g.

The German government's Monopoly Commission has in it XIVth Expert Opinion (German) "Net Competition by Regulation" (published on 2002-07-08) studied the question of software patentability, see

• Chapter V, Art. 4.4 "Patentability and Patents for Software Products (German, Word, 32 KB)".

The Monopoly Commission criticizes the latest regulation proposals of the European Commission as well as the recent practise of the European Patent Office and some German courts.

• "Thereby the EPO creates an additional exclusion provision which has no basis in either the wording or the legal systematics of Art 52 EPC. ..."
• "On the whole, the national jurisdiction has also largely lost sight of the wording of the law."

The Monopoly Commission's expert opinion covers very clearly the whole breadth of the problem. As far as small and medium enterprises (SME) are concerned, the final sentence under subclause 7 depicts reality very accurately:

• "Empirical studies about the conduct of small and medium enterprises in the software areas have shown that for such companies patents tend to be one of the least effective methods for protecting their investments."

This XIVth expert opinion has more than 500 pages and a "Summary" (German, PDF, 73 KB) of 58 pages, where you can find the statements about software patents under sections 112 and 114 (German, TXT, 5 KB).

The FFII (Foundation for a Free Information Infrastructure) is one of the best known critics of the current software patenting practise and of the European Commission's directive proposal. The FFII website contains detailed information about the current discussion.

• FFII – Software Patents Website
• FFII – Call for Action

The signatories of this Call for Action include numerous well-known politicians, scientists, software entrepreneurs and associations. They explain what they are concerned about and what they believe should be done. The text refers to additional documents, including a counter-proposal in tabular listing alongside with the European Commission's directive proposal.

• FFII – Examples of European Software Patents

FFII publishes numerous examples on his website. Let's look at one of them:

• Adobe Patent on Tabbed Palettes EP 0 689 133

"This patent, granted by the EPO in Aug 2001, has been used by Adobe to sue Macromedia Inc in the US. The EP version took 6 years to examine, and it was granted in full breadth, without any modification. It covers the idea of adding a third dimension to a menu system by arranging several sets of options behind each other, marked with tabs. This is particularly found to be useful in image processing software of Adobe and Macromedia, but also in The GIMP and many other programs."

What's technical to this patent? A patent professional explained to the author, that it is "economical use of the limited resource area on the computer screen."

• FFII – Patentability Legislation Test Suite

Quote from said page: "In order to test a law proposal, we try it out on a set of sample innovations." For non-lawyers it would be of great help if the European Commission's Directive Proposal and other proposals could be explained on the basis of examples. We support this idea and humbly beg all participants of the discussion to explain whatever they propose by referring to sample patents. This will most certainly also help lawyers to improve their reasoning.

The Eurolinux Alliance criticizes the patenting practise and the EU directive proposal.

• The Petition for a Software Patent Free Europe can be signed here.
• Companies can support this initiative by publication of their logo, which can be submitted by mail.

Positions of industry associations concerning the European Commission's directive proposal

• DIHK (German Chamber of Commerce)

The German Chamber of Industry and Commerce (DIHK) takes a critical view of the directive proposal. This paper dated 2002-04-20 (in German) is not yet published. IHK members may request it by e-mail.

Press release of DIHK dated 2002-10-04
• ZVEI – 2002-03-12 press release: Directive Proposal does not go far enough (German)
• ZVEI – 2002-05-02 position paper of 5 pages about the directive proposal (German, PDF, 37 KB)

This position paper of the ZVEI (German electrical and electronic manufacturers' association) had been prepared in the "Working Group for Industrial Property" only. We propose that discussions be held also in the product divisions, e.g. in technical working groups of the "Product Division Industrial Automation".

Examples

Examples of very general software patents and of software patents which are relevant for industrial automation. Special section on fieldbus patents.

Filed Today, Patented Tomorrow?

Ideas which are filed at the patent office today are usually meant to be patented. By looking at exemplary patent applications of a large German electronics corporation, which has been pushing for an extensive patenting practise for many years, you can recognize the direction where we are heading.

Statements and Demands

After a detailed analysis of the current patenting practise, of the EU Directive Proposal, of related literature and of numerous example patents and patent applications as well as extensive discussions with proponents and opponents of software patentability, we have worked out a position paper on software patents, which includes a series of demands.

Plea for a Clear Concept of Technical Inventions (PDF, 236 KB)

Transparencies (translated) for a lecture given at a meeting of the working group "Communication in Industrial Automation" of the German electrical and electronic manufacturers' association ZVEI on 2002-06-05.

Please note: The software and hardware names, company names, and brand names used in this text may be subject to trademark, registered trademark, or patent protection.

Please send any suggestions, comments and critical remarks about www.esr-pollmeier.de/swpat/... to Stefan Pollmeier.