NOTICES
11. January 2011
German Patent Law
The German Federal Court of Justice (Bundesgerichtshof, BGH) has recently issued the decision X ZR 47/07 – "Display of topographic information" ("Wiedergabe topographischer Informationen") regarding the patentability of computer-implemented inventions.
In this decision, the BGH held the following:
a) The subject matter of a method relating to the display of topographic information by means of a technical device is not excluded from patentability under Art. 52 (2) c) or d) EPC, if at least one partial aspect of the teaching protected by the claims solves a technical problem.
b) When assessing the inventive step of the invention only those instructions are to be regarded, which determine or at least influence the solution of the technical problem with technical means.
c) The selection of a presentation of position-related topographic information in a representation for the purpose of navigating a vehicle (in the present case, a display with a central perspective) is a non-technical specification for the technical person skilled in the art and thus is not to be considered when assessing the inventive step of a method of displaying topographic information.
Accordingly, the BGH confirms its current approach (e.g. refer to decisions X ZB 20/03 – "Electronic payment transactions" ("Elektronischer Zahlungsverkehr"); X ZB 34/03 – "Profitability Determination" ("Rentabilitätsermittlung"); X ZB 22/07 – "Controlling device for examination modalities" ("Steuerungseinrichtung für Untersuchungsmodalitäten"); Xa ZB 20/08 - Dynamic document generation" ("Dynamische Dokumentengenerierung"), see our notice http://www.mueller-bore.net/notices/29, X ZR 188/01- "Recording medium ("Aufzeichnungsträger")) in that it is sufficient for overcoming the exclusion of Art. 52 (2) and (3) EPC (equally for Section 1, paragraphs (2) and (3) of the German Patent Act) that at least part of the claimed subject-matter has a technical character, i.e. contribute to the technical solution of a technical problem. In this respect, the BGH notes that the exclusion provision of Art. 52 (2) and (3) EPC serves as a kind of coarse triage for discarding those cases where the claims do not contain any technical teaching at all.
This approach of the BGH is also fully in line with the approach taken with respect to Art. 52 (2) and (3) EPC by the Technical Boards of Appeal of the EPO following decision T 258/03 – "Auction method/HITACHI". T 258/03 as also confirmed by the Enlarged Board of Appeal in opinion G 03/08, in relation to questions referred by the former President of the EPO, Ms. Alison Brimelow, regarding the patentability of programs for computers. See our notice http://www.mueller-bore.net/notices/27 regarding G 03/08.
Moreover, the BGH confirms its current approach (refer e.g. to decision Xa ZB 20/08 – "Dynamic document generation" (Dynamische Dokumentengenerierung), see our notice http://www.mueller-bore.net/notices/29) that non-technical features of the claims (i.e. features not determining or at least influencing the solution of the technical problem with technical means) are not to be considered when assessing inventive step under Art. 56 EPC (likewise under Section 4 of the German Patent Act). In this respect, the BGH explicitly refers to and follows opinion G 03/08 of the Enlarged Board of Appeal.
Finally, when assessing the inventive step of the claimed subject matter, the BGH in the result takes an approach similar to that taken by the EPO under the "modified problem-solution approach" (since the decision T 641/00 – "Two identities/COMVIK, see e.g. EPO Guidelines for the Examination C-IV 11.5.2): the non-technical features of the claims are given to the person skilled in the art as part of the framework of the problem to be solved, in the sense of constraints which have to be met, and thus cannot contribute to an inventive step.
In the decided case, the independent claims related to a method and device for the perspective display of a part of a topographic map by selecting, in dependence of a position of a vehicle, topographic information from a data structure, where under the influence of a coordinate transformation the display takes place according to a viewing position which moves together with the position of the vehicle and with a solid angle that takes into account the instantaneous motion of the vehicle, characterized in that for an earthbound vehicle the viewing position is above the earth and the solid angle contains an actual simulated position of the vehicle itself.
In this respect the BGH regarded the claimed features relating to the projection of topographic data for navigation purposes not as a technical solution, but rather to relate to the preceding selection of a cartographic display suitable for navigation purposes which are given as constraints to the person skilled in the art. Thus, the BGH did not consider the features relating to projection of topographic data for navigation purposes to contribute to inventive step under Art. 56 EPC.
In summary, with the decision "Display of topographic information" the BGH has confirmed and follows the current approach of the EPO with respect to the examination of the patentability of computer-implemented inventions with respect to the extent of the exclusion of Art. 52 (2) and (3) EPC as well as with respect to the assessment of inventive step under Art. 56 EPC.
Download the full text of the decision X ZR 47/07 – "Display of topographic information" ("Wiedergabe topographischer Informationen") of the German Federal Court of Justice under:
http://www.mueller-bore.de/tl_files/Decisions_BGH/Wiedergabe_topografischer_Informationen.pdf
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