EU Litigation Update

Software as Patentable Subject Matter in Germany - Recent Case Law of the German Federal Supreme Court: In a series of decisions starting in 2009 and culminating in the most recent decision of February 24, 2011, docket no. X ZR 121/09 – Webseitenanzeige, the German Federal Supreme Court (Bundesgerichtshof, BGH) outlined the requirements for software patents under German patent law. After a decision of the BGH’s Xa Senate in 2010 (GRUR 2010, 613 – Dynamische Dokumentengenerierung), in which the BGH declared a Siemens’ invention for the generation of structured documents with dynamic contents patentable (albeit without addressing its novelty or inventiveness), many commentators believed the BGH had dramatically lowered the barriers to software patentability in Germany. Some feared it would be sufficient to add language referring to a computer to a claim merely to fulfill the patentability requirements. The X Senate clarified the BGH’s position later in 2010 under Art. 52 EPC (BGH GRUR 2011, 125 – Wiedergabe topografischer Informationen) and in its latest decision on another Siemens patent under the corresponding German rules on patentable subject matter in § 1 paras. 1, 3 and 4 German Patent Code (Patentgesetz, PatG).

Under § 1 para. 1 PatG, only technical inventions are patentable subject matter. It is sufficient that only a part of an invention involves a technical aspect (Wiedergabe topografischer Informationen, para. 31). It is, for example, sufficient that steps of a method are performed by technical devices connected to each other by a network, like the typical steps of processing, storing, and transmitting data by such devices (BGH GRUR 2009, 479 – Steuerungseinrichtung für Untersuchungsmodalitäten), even if such devices are not mentioned in the claims provided that their use is obvious to a person skilled in the art (Webseitenanzeige, para. 16).