Pages 268-278

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

DE Germany

Decision of the Bundespatentgericht (Federal Patents Court) dated 10 May 2004

(20 W (pat) 314/02)1

Headword: "Preisgünstigste Telefonverbindung" (Cheapest telephone connection)

Sections 1 and 4 PatG (Patent Law)

Keyword: "Technical contribution to the state of the art - inventive step"

Headnote

I. In view of the intention and purpose of the Patent Law, inventive step within the meaning of Sections 1(1) and 4 PatG can only be associated with a technical contribution to the state of the art. The inventive achievement must be a technical one (following on from the decision of the Federal Patents Court in GRUR 2002, 791 - "Elektronischer Zahlungsverkehr").

II. The contribution to the state of the art - that of establishing the cheapest rate in respect of each individual call, on the basis among other things of call duration, rather than in respect of the aggregate of several calls - is not technical; it is based on purely commercial considerations, which cannot involve an inventive step.

Reasons

I. An opposition was filed against patent 198 53 697 on the grounds that its subject-matter was not patentable. In addition to the documents considered during examination, the opponent cited

(7) US 5 793 853

(8) US 5 027 388

(9) US 5 553 131 and

(10) DE 695 03 882 T2 (relating to prior document EP 0 748 557 B1),

claiming that the patent lacked novelty vis-à-vis (9) and (10), and inventive step vis-à-vis (7) and (8). At the oral proceedings, the opponent also argued that the subject-matter of the patent lacked technical character.

The opponent requested that

the patent be revoked.

The patent proprietors requested that

the patent be maintained in its entirety,

or auxiliarily that device claim 4 be maintained.

Claim 1 of the patent reads:

"1. Method for effecting telecommunication connections for users in a telecommunication system having competing rates, wherein a choice is made for a rate which is as economical as possible for the user based on data of competing rates contained in a memory, wherein these data represent prices in dependence on at least one of the following parameters, the start time of the communication connection, the day of the week, holiday, the rate zone, characterised in that the end time and the duration of a telecommunication connection and the data associated therewith belong to the above-mentioned data for the rate, wherein the telecommunication connection is switched through without previous choice of one single rate and, after the above-mentioned telecommunication connection has ended, the rate data are used to determine which rate is the most economical while taking into consideration the duration of the telecommunication connection and this most economical rate is taken into consideration when invoicing the user."

Device claim 4 reads:

"4. Device for carrying out a method according to any one of the preceding claims in using a network which is configured to carrying out the method, characterised in that a memory (rate memory 20) is present in which data of a plurality of rates are stored in dependence on a plurality of parameters including the end time and connection duration, and a device is provided to which data from the network characterising the conversation (AMA, call detail record, data file) can be fed and which uses this data from the individual conversations or connections and the individual rates from the stored data to determine that rate which gives the lowest price for the particular call which has already ended."

The patent proprietors argued that the method and device were beyond doubt of a technical nature when taken as a whole. Individual features and considerations, such as the selection of a rate, when taken separately did sound commercial in nature; but they were so closely connected with measures that were clearly technical, in particular with recording the duration of a telecommunication connection, that, much as in the case considered in the Federal Court of Justice (BGH) "Tauchcomputer" decision (GRUR 1992, 430), the totality of all claimed features had to be examined when patentability was assessed. However, the establishment of a telecommunication connection without prior selection of a rate, and the identification, based on rate data and call duration, of the cheapest rate once the call was over, could not be inferred from the state of the art. Any deviation from the practice of determining the rate before a connection was established was in diametrical opposition to the patented invention, and involved the aggregate cost of a plurality of telephone calls as described in the state of the art ((9) and (8)). The case for patentability was further strengthened by the considerable advantages and technical effects achieved with the invention, such as faster connection times, and its commercial success.

...

II. The opposition, which is clearly admissible, is successful. The patent is therefore revoked because neither the main request (as granted) nor the auxiliary request (device claim only) is legally valid; its subject-matter is not patentable. With regard solely to the technical contribution of the claimed invention to the state of the art, neither the claimed method nor the claimed device involves an inventive step under Sections 1 and 4 PatG.

...

2. It is doubtful whether the claimed invention is fundamentally patentable (Section 1 PatG).

...

However, it matters not whether this is a patentable technical invention and how it should be classed, because the claimed subject-matter lacks inventive step.

3. It is even debatable whether the method under claim 1 involves an inventive step, taking into consideration the totality of the claim's features including any non-technical ones. In answering this question, one must look beyond information from the state of the art as printed and the purely technical considerations and actions of the relevant technically skilled person, as argued by the patent proprietors. Section 4 PatG states summarily that an invention involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. Even the technically skilled person - in this case an electrical engineer or physicist with training in telecommunications and experience in the narrower field of telephone services, including rate structure and call charge registration - is also conscious of his responsibility for commercial success. He himself takes into account the obvious wishes of customers to limit the cost of using the system he has developed, or at least bears these wishes in mind when they are brought to his attention (see decision of the Federal Patents Court in GRUR 2002, 418 - "Selbstbedienungs-Chipkartenausgabe"). The patent specification mentions the fact, correctly referred to as being known, that different telephone service providers offer different rates; it is easy to conclude that users would want to know the cheapest rate available for a particular duration. This, of course, is only possible once the call is over.

4. However, taken solely on the merits of its technical contribution to the state of the art, the claimed invention lacks inventive step both as a method and as a device.

(a) Patent law was instituted to encourage new, non-obvious and industrially applicable solutions to technical problems by granting protection of limited duration in the form of exclusion rights. This principle, upheld time and again by the Federal Court of Justice, and not seriously called into question anywhere, was also reiterated in the most recent Federal Court of Justice decision "Suche fehlerhafter Zeichenketten" (BGH GRUR 2002, 143 - "Suche fehlerhafter Zeichenketten") in connection with the patentability of computer-implemented inventions.

With reference to this principle, the Federal Patents Court stated in its decision "Elektronischer Zahlungsverkehr" (GRUR 2002, 791) that the inventive achievement too must be of a technical nature. By way of justification, the grounds refer to a series of Federal Court of Justice decisions (GRUR 1987, 351 (353) - "Mauerkasten II", GRUR 1990, 594 (596) - "Computerträger", GRUR 1991, 120 (121) - "Elastische Bandage", GRUR 1994, 36 - "Messventil") in which inventive step was deemed not to be involved in respect of combinations of technical features because they were primarily of a commercial nature and did not represent an achievement beyond the ability of the average skilled person.

According to the Federal Court of Justice "Tauchcomputer" decision (GRUR 1992, 430), the entire subject-matter of an invention, including any method of calculation, must be examined for inventive step. In the case ruled on by the Federal Court of Justice, however, the method of calculation involved diving depths and diving times, ie technical values. There was no basis for taking the "Tauchcomputer" decision and applying its treatment of the non-technical features of the patent claim more generally to any cases where the calculation method involved non-technical quantities such as sums of money, as in the case ruled on by the Federal Patents Court. Accordingly, the Federal Court of Justice in its more recent "Sprachanalyseeinrichtung" decision (BGH GRUR 2000, 1 007) asked to what degree elements pertaining to a text's revision, which could not readily be classed in the field of technology, should be taken into account in the examination as to patentability. This question went unanswered, however, because it did not arise in the case ruled upon. Nevertheless, the Federal Court of Justice pointed out that "completely disregarding" non-technical insights underlying the subject-matter of an application conflicted with the principles evolved in the case law for the assessment of inventive step in connection with data processing inventions. In the overall context of the grounds for the "Sprachanalyseeinrichtung" decision, the Federal Patents Court decision found that the emphasis should be on "completely".

Taking into consideration two relevant EPO board of appeal decisions (T 931/95 GRUR Int. 2002, 87 - Controlling pension benefits system/PBS PARTNERSHIP2; T 619/98 Television set, of 23 April 1999, not published in the OJ EPO) and with reference to the EU Commission's Proposal for a Directive on the patentability of computer-implemented inventions of 20 February 2002, the reasons for the Federal Patents Court's "Elektronischer Zahlungsverkehr" decision state that, in view of the intention and purpose of the Patent Law, along with the Federal Court of Justice and EPO decisions referred to, the Federal Patents Court's conclusion - in accordance with the broad outlines of the directive proposal - was that inventive step within the meaning of Sections 1(1) and 4 PatG could only be associated with a technical contribution to the state of the art. However, to establish that technical contribution, the claimed subject-matter of the invention must not be broken down so that the examination for inventive step, ie obviousness, was restricted to that part of the invention having technical features. Determining technical contribution necessarily meant taking into account the entire subject-matter of the patent claim, including non-technical features. For the purposes of novelty and inventive step, however, non-technical matter should be disregarded where it bore no relation to the technical content, and would not contribute even indirectly to the delineation of a technical feature of the claimed subject-matter.

The Federal Patents Court has remained of this view, which it sees as having been upheld by a series of decisions taken in the meantime by the EPO boards of appeal, two of which may be mentioned by way of example. The headnote to T 641/00 of 26 September 2002 (GRUR Int. 2003, 852 - Two identities/COMVIK3) states that an invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to the said technical character, whereas features making no such contribution cannot involve an inventive step. Another example is T 258/97 of 8 February 2002, which states in point 5 of the Reasons: "However, an abstract algorithm is relevant to inventive step only if a technical effect can be established which is causally linked to the algorithm, providing a contribution to the solution of a technical problem and conferring, in this sense, 'technical character' to the algorithm (see T 27/97 Cryptographie à clés publiques/FRANCE TELECOM, not published in the OJ EPO)".

The inventive achievement must therefore be a technical one.

(b) With regard to the case under consideration:

(aa) The state of the art in (9) highlighted by the patent proprietors at the oral proceedings relates to an existing method for providing communication connections that establishes the cheapest rate once a call is over, depending on the rate structure and the duration of the call. However, this rate is not calculated in respect of each individual call but rather in respect of all calls made within an invoicing period on the basis of the aggregate duration of all calls made within various distance bands.

According to (9), claim 1, column 6, lines 29 to 36, telecommunication connections are effected for users in a telecommunication system having competing rates (service plans), wherein the cheapest rate is selected for the customer on the basis of data on competing rates (column 6, lines 56 - 67). It is clear that the necessary data are stored in a memory (see also column 4, lines 33 - 36). These data consist of the prices determined by the start time of the communication connection (column 6, line 33 in conjunction with column 4, lines 11 - 20) and "mileage band" (determined by calling and called telephone numbers, see column 4, line 38 to Table 1). This means that a method with the features in the prior art portion of claim 1 can be taken as known from (9).

There is a further overlap with the claimed method in that, according to (9), the above-mentioned rate data may also include as parameters the duration of the telecommunication connection and corresponding data (column 5, lines 7 - 14; with regard to the principle of a rate based on the aggregate of call durations, see also column 2, paragraph 2). At all events, the duration of each individual call is always determined to establish the cost (column 1, penultimate paragraph; column 4, lines 38 - 40). As in the claimed method, the communication connection is established without prior selection of a particular rate (column 2, lines 40 - 43 in conjunction with column 1, lines 41 - 46). The cheapest rate, taking into account the (aggregate) duration of the telecommunication connections, is established on the basis of the rate data for a particular invoicing period and thus once a larger number of telecommunication connections has been made (Figure 4 and associated description; claim 3 in conjunction with claim 1). The customer is then charged this cheapest rate, as is the case with the invention (claim 1, last feature; Figure 4, bottom table, "Cost to account" column).

So, the claimed subject-matter differs from the state of the art in (9) in that the rate data also includes the end time of a telecommunication connection as a parameter, and that the cheapest price is worked out not for the totality of several calls but rather for each individual call, among other things according to its duration.

(bb) Since in (9) the start time and duration of a call are explicitly saved (column 1, penultimate paragraph), it is obvious that, to calculate the duration, the end time should also be saved. Furthermore, the end time is usually part of the rate data along with the start time and date of a call, because the call could end in a period with a different rate to that applying at the start time (see (9), column 4, lines 16 - 21; (10), Figure 11 in conjunction with page 21, paragraph 3).

The invention's contribution to the state of the art in (9), in calculating the cheapest rate in respect of each individual call rather than the totality of calls, and taking duration into account, is prompted by costing and competitive considerations. It is not of a technical nature, being based purely on commercial considerations, which cannot involve an inventive step. Any commercial success connected with the invention, as asserted by the patent proprietors, has therefore equally little to do with technical achievement.

The technical characteristics of a telecommunication connection, ie start time, calling and called number (and therefore the distance), plus the duration of the call, are set out in (9) in the form of a "record" of each individual call (column 1, penultimate paragraph), and it is obvious that a further parameter which has to be taken into account is the end time. No technical considerations are involved, especially not with regard to recording the duration of the call. How these individual factors are reflected in the cost of a telephone call, ie in the rate structure, is just as much a commercial consideration as the choice of an invoicing method in respect of individual calls or a plurality of calls.

Nor is there a close interrelation between the rate structure (including the invoicing method) and the characteristic values of a call that has ended. How the recorded and saved values should be reflected in the price is a purely commercial consideration. The method described in the patent requires only such values as are given and utilised in the state of the art in (9): the only difference is that these values are linked to another pricing and invoicing structure, ie used for commercial purposes and with a commercial objective, but not linked to another technical value. This is where the patent proprietors' argument concerning the Federal Court of Justice "Tauchcomputer" decision (loc. cit.) falls down. Certainly, the Court stressed in this decision that the examination of inventions in which technical features were associated with non-technical features must take into consideration the subject-matter of the invention as a whole, including any method of calculation: the subject-matter of the invention must not be broken down so that only that part of the invention having technical features is examined for inventive step, ie obviousness (GRUR 1992, 430 [432]). In the case decided on, however, the method of calculation linked diving depths and diving times - technical values - in a scientific rather than a commercial context to yield a technical result, ie the total surfacing time indicated.

Finally, the patent proprietors' claimed technical effect - that a connection is established more rapidly - may confer technical character on the invention but does not involve an inventive step, because it does not differ in this regard from the state of the art in (9).

(cc) The device for carrying out the method, which was the only subject-matter claimed in the auxiliary request, also lacks inventive step for the same reasons as the method in claim 1 of the main request.

The device according to claim 4 corresponds to the method in claim 1. A skilled person would have no difficulty in extrapolating from the state of the art in (9) the device features necessary for the method steps described, where not already indicated explicitly (see Figure 1). The network claimed for the device, which is meant to be configured to carry out the method and supply data characterising each call (AMA, call detail record, data file), is also suggested to the skilled person by (9) (Figure 1 with associated description, especially column 3, line 62 to column 4, line 4). The only difference between the state of the art in (9) and the claimed device therefore consists in the process features described above.

II. The appeal on a point of law is admissible under Section 147(3), fifth sentence, in conjunction with Section 100(2)(2) PatG.

DE 3/05