[Patents] Re: [Fwd: Dispositionsprogramm decision translated]

[phm@a2e.de (PILCH Hartmut)]

> (a) Germany is only one signatory to the EPC (albeit a very important one,
> economically and otherwise);

France and others have had very similar caselaw in the 70s.

> (b) the Convention (and most domestic laws re-modelled on it) have
> provisions to ensure at least a degree of conformity with each other by
> making national courts interpret laws in line with European Patent Office
> decisions wherever possible (reinforced by adminsitrative measures like the
> Euorpean patent judges conference, etc);

The Examination Guidelines of the EPO of 1978 and 1985 (still in force but
under reworking) were modelled on the Dispositionsprogramm decision and
Gert Kolle's interpretation of it.

> (c) we could expect, therefore, a weak centipetal pressure towards the EPO
> position on most things - here, this would mean a tendency (*not* absolute -
> look at the position in the United Kingdom) towards wider protection for
> software related inventions in EPC signatory countries;
>
> (d) does this show up in German law? Yes.

In German law: no.
In German caselaw: yes.
Caselaw has drifted away from the law, as has EPO caselaw, but
later.

> Dispositionprogramm is *not* the governing standard in German patent
> law

It is an interpretation of German patent law that is in line with the law,
seen from a literal, historical as well as teleological perspective.
This can not be said about any of the recent decisions of the BGH.

> and has not been for some time. I assume, therefore, that all
> references to it are normative (i.e. this is what we should do) rather
> than positive (i.e. this is the present position);

No, more than that.
The references are positive in the sense of what the law means.
You cannot understand current BGH practise without understanding the
standard that it is violating.
And this standard is still a reality that is backfiring all the time in
legal practise.  An indirect result of this fact is that the
Dispositionsprogramm decision is quoted in most of those new decisions
that violate the law, as a kind of expression of bad conscience.

> (e) if it is being argued that Dispositionprogramm is *positively* the
> standard in Germany, this is wrong - I attach some notes below which show
> how things have developed.

Thanks for the many references, most of which I know.

>  In Anti-lock Braking System (1981), there was clarification of a sort

Actually an introduction of chaotic and illegal concepts such as the
"technical program", which is apparently to be distinguished from a
"program as such", and the official legalisation of function claims.
Apart from opening loopholes through chaotic concepts, this decision is
however still in line with the concept of technical invention and can even
to some extent serve to clarify that concept.  see

        http://swpat.ffii.org/vreji/papri/bgh-abs80/

The ABS decision is in its historical function similar to "Diamond v.
Diehr" (US) and almost simultaneous.  It was met by great enthusiasm from
the patent lawyer lobby, as shown by the article of PA Eisenfuehr in GRUR.
In the case of "Diamond v. Diehr", big parties were given by patent
lawyers in New York's finest hotels to celebrate the event.  The real
meaning of the event was however not to introduce software patentability
but to muddle concepts and thus prepare the grounds for the next parts of
the upcoming salami tactic.

> Page Buffer (BGH) (1991) 23 IIC 824 (1992) -  this took up one  limb of the
> ABS decision. In summary, claims for a process for the operation of the
> memory of a multi-tasking computer wherein page memory is used to maintain
> data during task switching. Held: the alleged invention disclosed "teaching
> of a technical character". There was a technical problem (i.e. preventing
> crashes through loss of data when task switching) to which a technical
> solution has been proposed and a technical effect (i.e. improved system
> stability, more efficient use of computer memory) was evident. This is
> roughly equivalent to EPO practice of same era (no surprise).

And again this is a door-opening decision characterised by muddling
concepts.  In reality of course the "side-buffer" program was nothing
technical but a pure rule of organisation and calculation, in which
"technical" sounding entities appeared as abstractions.

> On same day, there was an appeal on other side of the line also dealt
> with: Chinese Characters (1991) 24 IIC 124 (1993). The invention
> allowed entry of keystroke sequences and resultant display of said
> characters. Held: information processing only, no effect on physical
> environment. How do we square that with page buffer? Interestingly,
> the court clarified by explaining that objection was based on mental
> steps objection, *not* program per se objection.

Yes, the BGH has always resented the list of exclusions of Art 52 EPC =
Par 1 PatG. It never based its decisions on that list but only on the
concept of technical invention, which however coincided with that list
before the Sidebuffer decision.  By writing an explicit list of exclusions
into the law, the lawmaker had limited the freedom of the EPO/BGH in
developping its own concept of technical invention and obliged them to
keep that concept within a certain realm, which the Dispositionsprogramm
decision correctly identified as the only meaningful realm.  Read again

        http://swpat.ffii.org/vreji/papri/bgh-dispo76/

In 1992 there was an unanimous and strong pressure from the patent bar,
(and a vague and unsubstantiated general impression that this was backed
by the software industry) to give up limitations.  Read

        http://swpat.ffii.org/vreji/papri/krasser86/

The concept of technical invention made the list of exclusions redundant
as long as it was upheld.  Starting in 1992, the BGH engaged in sophistry,
pretending to uphold the concept of technical invention but in reality
discarding that concept and holding the law in contempt, and in doing so
feeling backed by a strong "spirit of the times" (Zeitgeist).

For years, the EPO's illegal practise met only praise and no resistance,
which is why the BGH judges finally felt justified in betraying the legal
standards which their institution had helped build up.

Once the side buffer decision had turned that standard into shambles,
there was of course no way to build any consistent system anymore.  The
ensuing decline then came rapidly.  However, the Federal Patent Court's
17th senate has still been upholding the standards as well as it could
until today.

> Diving computer (1992) (BGH) 24 IIC 645 (1993) - clarified issue of claims
> reading. Do not dissect to remove unpatentable features: whole claim
> approach. Here, invention was device for calculating proper ascent/descent
> times for diving based on known tables. Fed. Pat. Ct. said unpatentable:
> method of calculation (unpat.) applied via computer program (unpat.) to
> known tables (not novel). Wrong, said BGH, take claim(s) as whole.

Which of course leads to unlimited patentability and to a legal quagmire.
Patents are granted in return for inventions, not for claims.

> Viterbi algorithm (Fed. Pat Ct., 1996) "a generalised viterbi algorithm
> (known sequence of steps for signal processing) for receiving signal
> transmitted through a noisy channel". Known algorithm being applied in
> specific way using specific equipment. Held: not an algorithm per se but, by
> virtue of careful limitation in claim, an algorithm having technical
> content. Therefore, patentable subject matter and, on novelty, new use of
> known thing.

This of course destroys both the concept of technical invention and
to a claim which is de facto not directed to a computer program as such
because it by writing and selling a computer program as such you will be
deemed to be infringing (at least contributorily), and by adding an
non-inventive extra step, namely the execution of the program on the
computer, you will be directly infringing on the claim.

> CAD/CAM system (Fed. Pat. Ct.) (1997) 30 IIC 315 (1999). Invention was
> series of graphic overlays (information and tools) for use in manipulation
> of 3d image data entered into cad/cam system. Held: no physical features or
> effect, production of information only.
>
> The difficulty with the dividing line drawn by the Fed. Pat. Ct. was that it
> made no sense and was wholly arbitrary: as Tauchert puts it: "every program
> affects the functionality of a computer and the interaction between its
> elements". Also, concerns that this was moving from BGH position: more cases
> *had* to go on appeal to "clarify"; they did.
>
> The BGH has recognised the silliness/lack of clarity and, in two recent
> decisions, has altered the way that software related inventions are handled.
> The Chinese Characters model has been entirely rejected and the court now
> considers the matter in relation to  of the computer as programmed
> ("technical unit") or to any "software designed equipment" (in theory, this
> could include a virtual machine).
>
> Summary: Thus, today, if (1) the wording of the claims is or can be read in
> this fashion (e.g. "means for" style or straight apparatus claim) and (2) if
> the operation of the technical unit claimed meets all the other patent
> requirements, the invention is patentable.
>
> Under this new approach, a speech analysis system and a system for verifying
> the functions of integrated circuits have both been held to be patentable
> subject matter; this would seem to take Germany at least as far forward as
> the U.S. position immediately prior to State Street.

Right.

However this BGH jurisdiction has not been stabilised, and under pressure
from the Federal Patent Court and from much of public opinion, they are
looking for ways to "row back" as we call it in German.  The latest
tendency is to reintroduce the "core theory" through the back door by
saying "it is patentable, yes, because it referes to a device, but wait a
minute:  when assessing inventivity you have to look whether what is
claimed to be new and inventive is also characterised by technical
considerations".  While "technical considerations" is very vague, it can
be made rigorous any time, because there is de facto no alternative to the
concept of technical invention, as the judges said in that 1976 decision,
to whom the BGH pays lipservice even in those infamous "speech analysis
system" and "logics verification" decisions of 2000.

I'd therefore say that we currently simply have an unstable situation
where the Dispositionsprogramm doctrine is a stable and attractive anchor.
Rowing back there may however take a few years time.

--
Hartmut Pilch                                           http://phm.ffii.org/
Protecting Innovation against Patent Inflation        http://swpat.ffii.org/
80000 signatures against software patents         http://www.noepatents.org/