Pages 402-412

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

DE Germany

Judgment of the Bundesgerichtshof (Federal Court of Justice), 10th Civil Senate, dated 17 October 2001 - (X ZB 16/00)^*

Headword: "Search for incorrect strings"

Section 1(2) point 3 and (3) DE-PatG (German Patent Law) 1981

Article 52(2)(c) and (3) EPC

Keyword: "Admissibility of claims for computer programs and storage media - technical character of computer programs - unity of invention"

Headnote

(a) The prohibition on the patenting of computer programs as such precludes any teaching in the guise of instructions suitable for computers from being regarded as patentable if - in whatever way - it only goes beyond making available the means which allow it to be used as a program for data processing equipment. Rather, the characterising instructions in the claimed teaching must solve a specific technical problem.

(b) A teaching falling within the prohibition on patenting (a computer program as such) does not become patentable merely because it is set out in a patent application in a form which is stored on a conventional data carrier.

Summary of facts and submissions

A. On 12 July 1993 the applicant filed with the German Patent Office an application for a "method and computer system for searching for incorrect strings in a text". The main request, which also included a claim for a digital storage medium, was refused. As a result of a decision dated 6 July 1998, a patent was granted only in respect of the auxiliary request. Claims 1, 17 and 20 as granted read as follows:

"1. Method for searching for and/or correcting, with the aid of a computer, an incorrect string F_i in a digitally stored text which contains the corresponding correct string S_i,

characterised in that

(a) the frequency H (S_i) with which the correct string S_i occurs is determined,

(b) the correct string S_i is modified in accordance with a rule R_j to generate a possible incorrect string f_ij,

(c) the frequency H(_ij) with which the string f_ij occurs in the text is determined,

(d) the frequencies H(_ij) and H(S_i) are compared, and

(e) the comparison in step (d) is used to establish whether the possible incorrect string f_ij is the incorrect string F_i which is being sought.

17. Computer system, in particular a text processing system, for searching for and/or correcting an incorrect string F_i in a text in which the corresponding correct string S_i is present,

with a first memory (1) for storing the text,

with a second memory for storing the frequency H(S_i) with which the correct string S_i occurs and

with a third memory (3) for storing the frequency H(f_ij) with which a possible incorrect string f_ij occurs,

with a fourth memory (4) for storing a rule R_j,

and with processor means (2) comprising:

a modifying device (5) for modifying the correct string S_i in accordance with the rule R_j to enable a possible incorrect string f_ij to be generated,

a detector (6) for detecting the frequency H(f_ij) with which a possible incorrect string f_ij occurs,

a comparator (7) for comparing the frequencies H(S_i) and H(f_ij), and

an allocator (8) for allocating the possible incorrect string f_ij to the incorrect string F_i on the basis of an output signal from the comparator (7).

20. Use of a computer system according to one of the claims 17 to 19 in a system for mechanical optical character recognition,

where the system for mechanical optical character recognition generates a draft text which it enters into the computer system to search for and/or correct one or more incorrect strings F_i."

(...)

The applicant's appeal against the decision of 6 July 1998 was in further pursuit of its main request which had been refused. Its most recent request was for the grant of a patent on the basis of claims 1 to 24. Claims 1 to 21 were identical with the claims in the granted patent. The further claims were to read as follows:

"22. Digital storage medium, in particular a diskette, with electronically readable control signals which are able to interact with a programmable computer system in such a way that a method according to one of claims 1 to 17 is implemented.

23. Computer program product with a program code, stored on a machine-readable carrier, for implementing the method according to one of claims 1 to 17 when the program product is run on a computer.

24. Computer program with a program code for implementing the method according to one of claims 1 to 17 when the program is run on a computer."

The Federal Patents Court dismissed the appeal. Its decision was published in BPatGE 43, 35 (= BIPMZ 2000, 387). The applicant's appeal on a point of law, which has been admitted, is in further pursuit of its wish to be granted patent protection for claims 22 to 24 too.

B. As a result of the (...) admissible appeal on a point of law the case is remitted to the Federal Patents Court because the latter's factual findings do not indicate conclusively whether the subject-matter of claim 22 is patentable (...).

I. The Federal Patents Court interpreted the application to mean that the disputed claim 22 was intended to relate to an ordinary storage medium differing from other machine-readable storage media in that it carried a data record which by interacting with an appropriate computer system could effect the implementation of the method according to one of the claims in question.

That conclusion prompts no legal misgivings and is not in effect contested by the appeal on a point of law. (...)

II. The Federal Patents Court refused patent protection for the subject-matter of claim 22 primarily on the grounds that the claim did not indicate a teaching which embraced at least the essential elements of a solution. An invention in the sense of a practical technical teaching consisted in a solution to a technical problem. According to paragraph 3, second sentence, of the description, the problem addressed in the application was to create an improved method and computer system for searching for and/or correcting an incorrect string in a text. But that could not be achieved solely by means of a digital storage medium which, as claim 22 merely stated, carried a data record. The method would only be carried out successfully with a computer system capable of interpreting the individual parts of the data record more or less completely and thereby implementing the desired stages of the method.

The appeal on a point of law rightly challenges that finding.

In asserting that, to solve the problem posed in the application, claim 22 teaches only the storing of a record of data which have still to be interpreted by a computer system and which are not themselves the representative control signals for carrying out procedural steps, the Federal Patents Court fails to make the essential point. It leaves out of account that, according to the wording of the claim, the claimed storage medium has to be able to interact with a programmable computer system, through the readable data stored on it, in such a way that the method claimed in claim 1 in particular is carried out. The instruction contained in claim 22 is accordingly intended to implement a particular computer program. The proposed digital storage medium itself is a concrete means of implementing the method also proposed in the patent applied for; (...) That is sufficient to constitute a solution to the problem posed in the application.

III. The Federal Patents Court regarded the storage medium with a data record according to claim 22 as a "program for a data processing system as such" and took the view that this claim was also excluded from patent protection under section 1 para. 2 point 3 and para. 3 Patent Law.

1. It arrived at this assessment on the grounds that the computer specialist used the ambiguous term "program" in a narrow sense to mean only the program code and its data records (at whatever stage of development). Since section 1 para. 2 point 2 in conjunction with para. 3 Patent Law called for a strict interpretation, the term "program for a data processing system as such" comprised a program code representation or record on an optical data carrier such as paper or a machine-readable storage medium.

The appeal on a point of law rightly contests this view as well.

(a) However, the view in question finds support in various places in the literature (Tauchert, GRUR 1997, 149, 154; Mitt. 1999, 248, 151; van Raden, GRUR 1995, 451, 457; before that also in Schulte, PatG, 5th edition., 1994, section 1 points 74 and 76). But weighty opinions have also been voiced in disagreement. In particular, the jurisprudence of the European Patent Office regarding the almost identically worded Article 52(2)(c) and (3) EPC states that subject-matter relating to data processing by means of a suitable computer is not to be considered as a "program as such" within the meaning of that provision if it has a - sufficiently substantiated - technical character (decision of 1.7.1998, OJ EPO 1999, 609, 618 f, 620 f - Computer program product/IBM; also, re the conclusions, Busche, Mitt. 2000, 164, 171; Singer/Stauder, EPC, 2nd edition, Article 52 point 49; Schar, Mitt. 1998, 322, 338; Bernhardt/Krasser, PatG, 4th edition, p. 103; see also Busse, PatG, 5th edition, section 1 end of point 45). Similar conclusions are reached in the literature by authors who take the view that a "program as such" is to be understood solely as the fundamental program content as yet devoid of any technical function (Melullis, GRUR 1998, 843, 851; in similar vein Anders, GRUR 1990, 498, 499).

(b) For legal reasons, the view of the Federal Patents Court cannot be shared.

The decision as to what programs for data processing systems are ineligible for patent protection because they are programs as such cannot be based only on the opinions of computer specialists. Rather - and this applies to all interpretations of the law - it has to take its cue from the text of the law, giving due consideration to the latter's intention and purpose.

(aa) The text of the law as it stands indicates that programs for data processing systems are not ineligible for patent protection across the board, but that at the same time, even if the other requirements of the law are fulfilled, patent protection cannot be obtained for every computer program. This suggests that a claimed teaching cannot be regarded as patentable merely because its purpose requires the use of a computer. Rather, a teaching whose practical application helps a suitable data processing system to work its way through certain instructions must have a characteristic feature which goes beyond that. Since data processing evidently has uses in almost every area of human life, it also has to be recognised in the light of that requirement that patent law was created to encourage new, non-obvious and industrially applicable solutions to technical problems by granting protection of limited duration in the form of exclusion rights. That in turn precludes any teaching in the guise of instructions suitable for computers from being regarded as patentable if - in whatever way - it only goes beyond making available the means which allow it to be used as a program for data processing equipment. Rather, the characterising instructions in the claimed teaching must solve a specific technical problem. In these circumstances, the claimed teaching may also be patented if it is to be protected as a computer program or in any other form which uses a data processing system.

(bb) This distinction between programs for data processing systems, for which as such protection is sought, and computer-related subject-matter not covered by section 1 para. 2 point 3 Patent Law means that claims which propose ways in which a computer can work its way through certain procedural steps in order to solve a problem in the conventional technical fields, ie engineering, physics, chemistry or biology, are in principle patentable. It will be necessary, however, to establish whether the teaching relating to data processing by means of a suitable computer is distinguished precisely by a characteristic feature which, in view of the purpose of protection under patent law, justifies patentability.

This is the line already followed by the Senate in its recent jurisprudence regarding computer-related patent applications in which it has called for - albeit with a view to the technical characteristics required of an invention within the meaning of section 1 para. 1 Patent Law - a general appreciation of what the main thrust of the claimed teaching is (BGHZ 143, 255, 263 - Logic verification). That approach would also allow an objective assessment and delimitation in the context of interest here. The facts on which the Senate has already ruled can therefore be adduced as examples in this case too. These indicate that a program can be patented if it is incorporated into technical processes, for example in such a way that it processes measured values, monitors the operation of technical devices or performs any other controlling or regulating function (decision of 13.5.1980 - X ZB 19/78, GRUR 1980, 849, 850 - Antilock braking system). A method whereby a data processing system is used to examine and compare data in order to perform an intermediate step in the manufacture of technical articles is also comparable to teachings which can generally be granted patent protection, if this solution is characterised by a finding based on technical considerations and its implementation (BGHZ 143, 255, 264 - Logic verification). The same is true if the teaching concerns the operability of the data processing system as such and thereby permits the direct interaction of its elements (BGHZ 115, 11, 21 - Side buffer)1. Nor are instructions for the particular construction of a data processing system or for its use in a special way (see BGHZ 67, 22, 29 f - Program for stock fund management) necessarily covered by the exclusion from patent protection.

(cc) The interpretation of section 1 para. 2 point 3 Patent Law considered by the Senate to be correct is borne out by the rationale underlying the legislation. The scope of the prohibition on patent protection for computer programs described above matches that of other aspects of section 1 para. 2 Patent Law. The scientific theories and mathematical methods referred to in point 1 as well as the schemes, rules and methods for performing mental acts specified in point 3 are excluded from patent protection only in so far as they are claimed in isolation from a specific function. But when used to solve a specific technical problem they are - in that context - in principle patentable (BGHZ 67, 22, 26 ff - Program for stock fund management; see also EPO, decision dated 30.5.2000 - T 27/97, point 3 - Public key cryptography/FRANCE TELECOM).

(dd) Section 1 para. 2 point 3, para. 3 Patent Law was deliberately modelled on the European provisions of Article 52(2)(c) and (3) EPC in order to ensure that the class of patentable inventions under national law is the same as that under the European Patent Convention (Bundestag document 7/3712, p. 27). When the European Patent Convention was being drafted, there were no clear ideas about what definition should be adopted for the patenting of computer-related teachings. During the diplomatic conference to conclude the Convention, it was expressly pointed out that attempts had been made in vain to give the abstract concepts more solid form and that their interpretation would have to be left to everyday legal practice (M/PR/I, p. 28 point 18, in: Minutes of the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents, published by the government of the Federal Republic of Germany; also reproduced in: Historical documentation relating to the European Patent Convention, published by the European Patent Office, annex vol. 3).

Nevertheless, the choice of words adopted in the European Patent Convention and the Patent Law reflects the desire not to hamper the development of the then still relatively new field of computer technology by setting no bounds to the scope of patent protection. Clearly, teachings in fields not traditionally regarded as technical should not be considered patentable simply because they are intended to be used with the aid of a computer. On the other hand, it would go beyond the stated aim to deny patent protection to a teaching characterised by technical processes or considerations on the grounds that it is meant for use in a computer and/or a number of computer specialists regard it as a program for data processing systems in the stricter sense.

2. The Senate is unable to judge definitively whether on this basis claim 22 is covered by the exclusion from patent protection under section 1 para. 2 point 3 Patent Law.

(a) The application relates to the search for and/or correction of an incorrect string in a text. This does not belong in the technical sphere, even if the text to be examined has been produced with a computer-supported text processing system. It will therefore be necessary in the present case, as stated, to find out whether claim 22 includes instructions which establish the necessary link with technology. This calls for an analysis of the facts and the ascertainment of the relevant circumstances. (...)

(b) A renewed examination cannot be dispensed with, for example, on the grounds that claim 22 does not directly claim a method. The teaching set out in claim 22 cannot be patented simply because the claim concerns in particular a diskette and thus a physical object (device).

According to the description in the patent application, known text processing systems use a so-called lexicon containing a list of known words. An error search involves comparing the words in an inputted text with the entries in the lexicon. The lexicon's use calls for a relatively large amount of memory. Moreover it may itself contain incorrect entries. It also has to be constantly updated, which can result in further incorrect entries.

To overcome these drawbacks, the solution proposed in claim 22 is obliged to use the method claimed in particular in claim 1 as granted. Like a sheet of paper containing information needed for other purposes, the storage medium to be protected by claim 22 merely has the function of an information carrier which can be used if the method is to be implemented by means of a computer. The appeal on a point of law itself acknowledges that the data carrier as such does not in the present case qualify as patentable. As the applicant has stated once again in the appeal, claim 22 is directed to a teaching for such subject-matter for the sole purpose of enabling a charge of patent infringement to be made without waiting until the method is implemented and having to provide specific evidence, thus making it possible to take legal action against infringing third parties at the stage when they are dealing in items by means of which the method could be successfully implemented or initiated. The desire to do that may be prompted by the idea that it is up to the applicant to use up all possible means of patent protection by formulating the claims in appropriate terms. But that does not justify answering the question as to whether a claim is patentable solely in the light of what category it belongs to and irrespective of what the main thrust of the claimed teaching is.

The above assessment of the category to which claim 22 belongs is not out of line with the Senate's decision published in BGHZ 144, 282 ff under the headword "Language analysis device" ("Sprachanalyseeinrichtung"), which assumed that a data processing system for processing texts had a technical character because the claim concerned a device which could be manufactured industrially and was capable of exploitation in industry. In that case it was those features of the claim in question characterised as a device which served to solve the problem in respect of which protection was sought.

(c) When considering the case again, the Federal Patents Court will therefore have first and foremost to assess those procedural instructions in claims 1 to 17 which are referred to in claim 22. As indicated in the patent application's description, these instructions are based on facts which can be obtained through a statistical survey. If they were (also) to characterise the teaching according to claim 22, the latter, in view of what has been said above, would not be patentable. At the same time, the opposite conclusion does not appear to be entirely ruled out.

(...)

IV. The Federal Patents Court's decision refusing patent protection for claim 22 is wrong for other reasons too.

The Patent Office justified the refusal of the main request at first instance on the grounds that the required unity was lacking, the principle behind the solution contained in claim 22 being entirely different from that of the preceding claims. This legal assessment is not corroborated by the facts as ascertained so far.

These show that all the claims are concerned with the same teaching. To solve the problem, claims 1 to 21 propose carrying out the search for incorrect strings in accordance with a particular method or using a suitable computer for the purpose. Claims 22 to 24 add to this proposal only the idea of employing a program on a storage medium to implement the method. This is (...) no more than a special embodiment of the inventive concept already set out in claim 1. Moreover a refusal on the grounds of lack of unity would conflict with the principle laid down by the Senate whereby any unnecessary segmentation of the application is to be avoided as far as possible during the examination as to unity (Senate decision of 29.6.1971 - X ZB 22/70, GRUR 1971, 512, 514 - Isomerisation; Senate decision of 25.6.1974 - X ZB 2/73, GRUR 1974, 774, 775 - Alkali diamide phosphites).

DE 3/02