From phm@a2e.de  Tue Dec  4 05:51:09 2001
From: phm@a2e.de (PILCH Hartmut)
Date: Tue, 4 Dec 2001 06:51:09 +0100 (CET)
Subject: [Patents] Re: BGH authorises computer program claims
Message-ID: <Pine.LNX.4.33.0112040634010.1034-100000@mulix.oas.a2e.de>

I replied to PA Horns on the recent BGH decision.

> These claims had been rejected by the Federal Patent Court
> (Bundespatentgericht, BPatG) on July 28, 2000 (17 W (pat) 69/98). The
> 17th Senate of the BPatG had concluded that those claims are directed
> to a subject-matter being too close to something like "computer
> software 'as such'".

The BPatG did not use the quotes in that way.
Unlike A. Horns seems to be suggesting, BPatG is not treating the
particle "as such" as anything mysterious.
What they said is basically: "we don't judge here whether the IBM process
is a technical one or not.  claiming a "computer program product" however
is nothing different from claiming a computer program [ as such ]."

> IBM then had lodged an appeal to the BGH.

> Now, inter alia, the BGH explicitly criticises the position of the
> BPatG according to which for solving the problem of the application
> claim 22 merely is teaching to make a data record to be interpreted by
> a computer system, the data not constituting representative control
> signals for performing the method. To the contrary, the BGH argues
> that the storage medium as claimed must be capable to interact in
> accordance with the claim language with a programmable computer system
> by means of the readable data as recorded such that, in particular,
> the method claimed with claim 1 is performed. Hence, and again
> according to the BGH, the instruction as expressed by the wording of
> claim 22 serves to realise a particular computer program. Furthermore,
> the BGH says that the proposed digital storage medium is a
> subject-matter means ("gegenstaendliches Mittel") for performing the
> method proposed within the patent application; the intentional usage
> ("bestimmungsgemaesser Einsatz") thereof leads to the desired result.

I would translate "bestimmungsgemaess" as "according to its destiny".
It has frequently been said by the BGH until recently that the process
on the computer constituted nothing inventive, because the equipment
was just used according to its destiny (bestimmungsgemaess), i.e. in
a predetermined way, not representing any intentional creative activity.

Your following findings may nevertheless be correct:

> This is indeed a very interesting finding of the BGH. In particular,
> but not limited to, because of this seems to be the very first time
> that the BGH talks in terms of "intention" in the context of the
> utilisation of a computer program.  Of course it is inevitably
> necessary to use this term; otherwise every bit pattern can
> potentially be regarded as a representation of a computer program
> "suitable" for performing the claimed method. This is true because the
> behaviour created by running a computer program is determined by two
> components: At first, by the computer program bit pattern (the "text"
> of the computer program), and secondly by the properties of the
> processor used to run the bit pattern. For example, it would surely in
> principle be possible to create a computer processor which performs
> the method in accordance with claim 1 if fed with a bit pattern as
> taken from a particular recording of Mozart's Requiem on an audio CD.
> Hence, if the BGH had not introduced the concept of a subjective
> "intention" here, every audio CD would be deemed infringing the claims
> as granted.

What if the intention is a communicative/descriptive one, like a textbook
about the patented process, which would also not infringe ?
Or a mixture, to be weighted according to how it is used/marketed ?

A claim like "computer program, characterised by ..." leaves no room
for such weighting.  It clearly covers all informational entities
that are destined to be used for running the process, no matter whether
that is their only/main destiny or not.

> This leads directly to a comparison with the statutory regulation on
> contributory infringement as provided with Sect. 10 of the German
> Patents Act:

> "A patent shall have the further effect that a person not having the
> consent of the patentee shall be prohibited from supplying or offering
> to supply within the territory to which this Law applies a person,
> other than a person entitled to exploit the patented invention, with
> means relating to an essential element of such invention for
> exploiting the invention, where such person knows or it is obvious
> from the circumstances that such means are suitable and intended for
> exploiting the invention."

> If a digital storage medium with a particular computer software
> recorded thereon would be considered to constitute "means relating to
> an essential element of such invention for exploiting the invention",
> a case of contributory infringement should be assumed if "[...] such
> means are suitable and intended for exploiting the invention." So,
> where is the benefit of having a claim granted like the language given
> with claim 22 of the recent BGH decision?

The procedures for contributory infringement are less stringent.
The question of "intention" (or destiny) is left open to interpretation.
It can e.g. be argued that the computer program is a legitimate
help in describing the process, like a manual on a patented procedure.
But this can no longer be argued if the program is a claim object.

> Moreover, the BGH deals with the meaning of the concept of a "computer
> program 'as such'". The 10th Senate explicitly rejects an

Again, there are no apostrophes, and there is no more a need to construct
such a concept than there is to construct an "aesthetic creation as such".

> interpretation of this concept based on one normal understanding of
> the expert skilled in the art and restricting this subject-matter to

That would be like saying that the "aesthetic creation as such" is only a
particular lampshade, the rule for creating lampshade patterns thus still
being patentable, especially when it is dressed up in "technical features"
such as references to colored pigments.

Mr. Horns has been disinforming the public about art 52 using this
interpretation in a BMWi ordered study and many other writings, see
http://www.ffii.org/vreji/papri/bmwi-luhoge00/.  Most readers wouldn't
have guessed that neither the EPO nor the BGH share this approach.

But again, the observation is interesting:

> the "program code" and recordings thereof.  Furthermore, the BGH says
> that they won't rely on such expert understanding and instead prefer
> to put forward some kind of stand-alone interpretation of the wording
> of the law in view of the purpose of the law.

> In this context, the recent BGH decision exhibits a rather obscure
> assertion which might raise further debates: They say that if a
> teaching expressed as a computer program is deemed to be eligible as
> subject-matter of a patent claim, the "shaping instructions"
> ("praegenden Anweisungen") of the teaching as claimed must serve to
> solve a particular technical problem. Hence, there seems to be some
> kind of a backdoor through which the old well-known and since long
> officially abandoned "chore theory" might come in again. If there are
> "shaping instructions" helping to solve a "technical problem", there
> must also be another category of instructions not related to technical
> concepts. If such other instructions are found to be "shaping", no
> patent can be granted. It looks that now as if each patent application
> related to a computer-implemented invention must pass such a test.

At the same time, previous decisions like "Sprachanalyse" give up any
possible restricting test, as observed correctly by Nack's article (and of
course by Schoelch and Kiesewetter-Koebinger, see the list in
http://swpat.ffii.org/stidi/korcu/).

> The BGH emphasises that the recent decision is also in line with the
> provisions of the EPC.

Which indeed seems to need emphasis now.
With what else could it be in line anyway?

> In the present case, the BPatG had not identified the "shaping
> instructions" of claim 22. Therefore, it seems to be consequent that
> the BGH has returned the case to the BPatG in order to make
> appropriate findings; the BGH not being entitled to hear new facts and
> evidence.

Again, previous BGH decisions bar the BPatG from making any meaningful
findings concerning technicity.  They can try, but according to its
current doctrine, the BGH will always send the decision back, unless
the BPatG desists from rejecting applications on the basis of art 52 /
/ subject matter / technicity

-- 
Hartmut Pilch                                         http://phm.ffii.org/
Protecting Innovation against Patent Inflation	    http://swpat.ffii.org/
95000 signatures against software patents       http://www.noepatents.org/



