European Courts Signal an Opening for Software Patents

June 2010

In two recent decisions, the German Federal Supreme Court in Karlsruhe upheld the patentability of two different computer program-related inventions on the ground that software is patentable as long as it solves a concrete technical problem by technical means. This begs the question-what is a "concrete" technical problem, and what is a "technical" means? The "technical effects" test has been on the books in Europe for some time, but European courts have generally been restrictive in interpreting this requirement as it applies to software. In the two recent German decisions, the German high court has signaled a more lenient approach toward allowing software patents.

On April 20, 2010, the German court confirmed the validity of European Patent No. EP 0 618 540 to Microsoft Corp. This patent involves a Virtual File Allocation Table (VFAT) file system used in Microsoft's Windows® operating system. Two days later, the same court confirmed that German Patent Application No. DE 102 32 674.6 filed by Siemens AG comprises patentable subject matter. The latter application relates to a method for generating structured documents.

In reaching the conclusion that the Siemens invention was patentable, the court emphasized that a computer program-related invention is only patentable if the solution of the concrete technical problem is both novel and involves an inventive step (the equivalents of Sections 102 and 103 of the U.S. Patent Act). Significantly, the court stated that the term "technical means" is not limited to so-called computer device components-in other words, the invention does not need to be tied to a machine. According to the court, it is sufficient that either (i) the course of the claimed program steps underlying the solution of the technical problem is defined by external technical conditions or (ii) the solution of the underlying problem is that the program steps consider the technical conditions defined by the computer device itself.

The test articulated above may be just as difficult to apply in practice as the test handed down by the U.S. Court of Appeals for the Federal Circuit in October of 2008 (click here for a discussion of this decision), but at first blush, it does appear to be less restrictive than the current Bilski standard in that inventions are not required to be tied to a machine, nor is there any particular "transformation" requirement. In this author's view, the broadened European standard, now adopted by the German Federal Supreme Court, makes more sense in that it tends to treat software-related inventions more like other inventions rather than imposing special requirements on (and higher standard for) these types of inventions.

The approach taken by the German court in the two decisions discussed above was followed, more or less, by the Enlarged Board of Appeal of the European Patent Office (EPO) in its May 12, 2010 decision concerning the patentability of computer programs generally. In this opinion, the Enlarged Board of Appeal confirmed its earlier decisions regarding the patentability of computer programs and held that such inventions are patentable as long as they provide "a contribution to the technical solution of a technical problem."

The key word, therefore, under European patent law in terms of the patentability of computer programs is "technical." In Germany, software must solve a concrete technical problem by technical means, and according to the EPO, software must contribute to the technical solution of a technical problem. Thus, it really boils down to this-the problem must be technical, the solution must be technical, and the solution must utilize technical means. As someone who has been involved for some time in the American Bar Association Section of Intellectual Property Law debates regarding the patentability of business methods, software and inventions generally, I have decided that it is not so much the words that are used to define the standard that makes a difference as it is how that standard is interpreted and applied by the courts.

The European decisions mentioned above-although they may not provide any more certainty in terms of the standard applied to determine whether software is patentable-do signify a willingness on the part of these tribunals to include software within the penumbra of patentable subject matter.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.