Hoffmann Eitle - München, London

"Developments in German case law regarding 'Computer-implemented inventions' and some comparison with EPO practice", CIPA Journal, December 2010, 719-722

Author(s): M. Baccelli, Dr. M. G. Müller, Dr. Th. B. Koch

Over the past two years, the German Federal Court of Justice (Bundesgerichtshof, BGH) issued a series of decisions consolidating the previous approach and clarifying some further points concerning inventions in the field of computer software and business methods implemented on computers. The authors, members of Hoffmann · Eitle's electrical engineering department, review the consolidated case law which demands that patentability must be assessed without reference to the prior art by determining whether the claim as a whole possesses technical character, and that features making no technical contribution to the prior art cannot contribute to inventive step. In addition, more recent decisions are reviewed which clarify that a claim shall be patentable if it provides a solution to a technical problem, thus adding a further requirement to the one that the definition of technical means in a claim shall suffice to make the claim eligible to patent protection. Finally, implications for business methods are discussed, and a comparative review with the EPO practice is provided.

The published article can be obtained through the Chartered Institute of Patent Attorneys (CIPA) (www.cipa.org.co.uk).