INFORMATION FROM THE CONTRACTING / EXTENSION STATES
DE Germany
Judgment of the Bundesgerichtshof (Federal Court of Justice), 10th Civil Senate, dated 4 February 1992
(X ZR 43/91)*
Headword: Tauchcomputer (Diving computer)
Article: 138 EPC
Section 265(2) Zivilprozeßordnung (Code of Civil Procedure); Section 81(1), second sentence, Patent Law 1981; Article II Section 6 IntPatÜG1
Keyword: "Technicality of an invention - must be judged in the light of all the features of a teaching - features already known can also impart a technical character"
Headnote
1. Under Section 265(2) of the Code of Civil Procedure, an action for revocation may continue against the proprietor named in the register of patents even if the patent at issue has been transferred to another person pendente lite and the purchaser has subsequently been entered in the register of patents (following BGHZ 72, 236 - Aufwärmvorrichtung (Heatingdevice); differing from RGZ 72, 242 and RG GRUR 1938, 581).
2. A person who operates a depth gauge, timer, data memory, evaluation and logic stage, converter or indicator in accordance with a given method of calculation (program oralgorithm), i.e. with the total surfacing time to be indicated dependent on the dive depths and times, and enables measured values ascertained by measuring devices to be automatically indicated on the indicator without the need for intellectual activity, is providing a technical teaching.
3. If an invention contains technical and non-technical features, its entire subject-matter, including any method of calculation, must be examined for inventive step.
Summary of Facts and Submissions
I. The defendants were the registered proprietors of European Patent No. 73 499 (contested patent), which had been granted with effect in several countries including the Federal Republic of Germany. (...)
The contested patent, which was published in German, the language of the proceedings, relates to a device for indicating the parameters of a dive. It has 16 claims. Claim 1 reads as follows:
Device for indicating the parameters of a dive, such as present depth, maximum depth reached, dive time elapsed or the like, which is controlled by means of
(a) at least one memory for the decompression parameters at various dive depths and times, and
(b) an evaluation and logic stage for the measured values of the depth gauge and timer according to the values stored in the memory,
characterised in that, at any time during the dive, the total surfacing time necessitated by the dive depths and times, including specified decompression stops, can be indicated, and/or a converter (5) is provided for converting the present bottom time (time spent at a particular dive depth stage), when a new dive depth stage is entered, into the equivalent bottom time for this new dive depth stage, which time corresponds to the time the diver would have spent at his maximum depth.
For Claims 2 to 16, see the patent specification.
II. (...)
The plaintiffs maintain that the subject-matter of the contested patent is not patentable. The teaching of Claim 1 lacked technical character and was neither new nor involved an inventive step.
III. (...)
The Bundespatentgericht (Federal Patent Court) (...) revoked the patent on the grounds that its subject-matter could not be regarded as a technical teaching.
In lodging an appeal the defendants are pursuing their petition for dismissal of the action.
The plaintiffs request that the appeal be dismissed.
Reasons for the Decision
I. (...)
II. The action for revocation of the contested patent has its legal basis in Article II section 6 IntPatÜG in conjunction with Article 138 EPC, according to which a European patent may be revoked with effect for the territory of the Federal Republic of Germany if its subject-matter is not patentable (Article II section 6(1) point 1 IntPatÜG, Articles 52-67 and 138(1)(a) EPC).
Contrary to the opinion put forward by the Federal Patent Court in the contested judgment, the subject-matter of Claim 1 of the contested patent is based on a technical teaching.
1. The contested patent relates to a device for indicating the parameters of a dive. On page 2, line 4 et seq., these are said to include the present depth, maximum depth reached, dive time elapsed or the like. The patent describes (page 2, line 9 et seq.) how a pressure equilibrium is produced by the diving apparatus (demand valve) when compressed air is used. In other words, the air inhaled by the diver was under the same pressure as the water surrounding him. The deeper the diver went, the higher the pressure of the air he breathed. As a result, more air was dissolved in his body. The various gases which made up the air enriched the tissues in the human body to different degrees depending on certain saturation factors. When the diver surfaced, the process was reversed and the tissues became desaturated (page 2, line 16). If he surfaced too quickly and the ambient pressure consequently dropped too fast, the air dissolved in the blood and tissues could not be exhaled quickly enough (page 2, lines 17 and 18).
2. The purpose of the contested patent is to make a precise record of the dive and to indicate the corresponding decompression conditions with a view to optimum decompression during any dive (page 2, lines 64 and 65).
It describes the technical problem to be solved as being to give the diver detailed and precise information about the decompression conditions (page 4, lines 48 and 49).
3. To solve this problem the contested patent proposes (page 4, lines 49-55) that, at any time during the dive, the total surfacing time necessitated by the dive depths and times, including specified decompression stops, can be indicated, and/or a converter is provided for converting the present bottom time/time spent at a particular dive depth stage, when a new dive depth stage is entered, into the equivalent bottom time for this new dive depth stage, which time corresponds to the time the diver would have spent at his maximum depth.
4. The device for indicating the parameters of a dive in accordance with Claim 1 of the contested patent thus has the following features:
It is controlled by means of
(a) at least one memory for the decompression parameters at various dive depths and times, and
(b) an evaluation and logic stage for the measured values of the depth gauge and timer according to the values stored in the memory;
(c) at any time during the dive, the total surfacing time necessitated by the dive depths and times, including specified decompression stops, can be indicated, and/or
(d) the indicator is provided with a converter for converting the present bottom time (= time spent at a particular dive depth stage), when a new dive depth stage is entered, into the equivalent bottom time for this new dive depth stage, which time corresponds to the time the diver would have spent at his maximum depth.
Claims 2 to 16 relate to features for further appropriate development of the indicator in Claim 1.
5. It is not possible to share the Federal Patent Court's view that the subject-matter of Claim 1 of the contested patent does not contain any technical teaching either in the full combination of features (a) to (d) or in the combinations of features (a) to (c) or features (a), (b) and (d).
(a) The Federal Patent Court takes the view that the new and inventive element of the teaching in Claim 1 amounts merely to a particular interpretation and evaluation of known diving tables. The main consideration was that, when the diver descended to a greater depth, the previous dive had to be regarded as a completed dive followed immediately by the next one, which was accounted for by means of time added to the dive time spent at the new depth stage. In the case of dives with changing depth stages, a correlation was thus established, at any point during the dive, with the table of decompression parameters, according to dive depths and times as well as maximum depth and overall dive time. This was simply a previously unused method of interpreting the diving operation. The discovery and use of previously unrecognised information in diving tables was in essence a non-technical algorithm. The realm of technology was not entered until after the actual problem had been solved, which entailed discovering the method for evaluating diving tables.
Feature (d) of Claim 1, which addressed the problem of establishing how the total surfacing time to be indicated was determined by dive depths and times, was also essentially only one particular method of evaluating diving tables. Even if that problem was to be solved with the converter already available in diving computers, the central idea again resided in a particular interpretation and evaluation of data from the diving tables, which did not belong in the sphere of technology.
The technical means listed, from the depth gauge to the indicator, served only as a basis for the essence of the invention, which was a particular way of interpreting and evaluating known diving tables. The automatic capture and indication of the total surfacing time did not impart a technical character to the subject-matter of the patent, but was merely another way of interpreting and evaluating the diving tables, in which the use of controllable natural forces was irrelevant.
Nor did the sub-claims contain any matter which, in conjunction with the non-technical subject-matter of the main claim, gave rise to an essentially technical teaching.
(b) This view of the invention's subject-matter concentrates too one-sidedly on the new method of calculating the total surfacing values using the decompression parameters. It does not give due consideration to all the technical means, from the depth gauge, memory and converter to the indicator, which automatically indicate the decompression conditions. The Federal Patent Court's remarks disregard the fact that the features of the protected teaching of Claim 1 of the contested patent are not confined to subject-matter and activities excluded from patent protection by Article 52(2) EPC, but rather describe a close relation between the method of calculation (program, algorithm) and the means mentioned in the claim, such as the indicator, memory, evaluation and logic stage, converter, depth gauge and timer. Its assessment of the method of calculation as a program and algorithm (interpretation and evaluation of data in diving tables), and of the above-mentioned technical means, is too biased in favour of the new method of calculation. The Federal Patent Court's fixation on what was known and what was new or novel distorted its objective assessment of what was in the foreground of the invention described in Claim 1.
(c) The Senate hearing the case considers the whole of the teaching in Claim 1 to be technical. The technical teaching resides in the fact that operating a depth gauge and timer, data memory, evaluation and logic stage, converter and indicator in accordance with a particular method of calculation (program or algorithm) enables measured values ascertained by measuring devices to be automatically indicated on the indicator without the need for any intellectual activity.
(d) The combinations of features (a) to (c) and features (a), (b) and (d) of Claim 1 must be assessed similarly as regards whether or not they represent a technical teaching. What has already been said applies again here.
6. Because the elements of the first alternative in Claim 1 (combination of features (a) to (c)) are described in general terms, the Federal Patent Court will first have to examine whether it discloses a complete teaching.
The subject-matter of this alternative is described in the characterising part simply as follows: "at any time during the dive, the total surfacing time necessitated by the dive depths and times, including specified decompression stops, can be indicated". This version of the claim does not specify any means of implementation. If it were found to be nothing more than a description of the problem of the invention, it would have to be deleted from the claim (BGHZ 92, 129, 132 et seq., Acrylfasern (Acrylic fibres)). The Federal Patent Court will therefore have to examine whether the totality of information in the patent specification is sufficient to teach a person skilled in the art how to solve the problem.
7. If the Federal Patent Court concludes that it is, it will then have to examine that alternative, the further alternative involving features (a), (b) and (d), and the totality of features in Claim 1, for novelty and inventive step.
8. Concerning this examination, the Senate hearing the case considers the following information to be relevant:
When inventions combining technical and non-technical features are examined for inventive step, any method of calculation must be included in an assessment of the subject-matter. It is not permissible to split the latter up and examine for inventive step - i.e. obviousness - only the part comprising the technical features. In the present case, this means that the new method of calculation, which the Federal Patent Court has described as a new interpretation of known diving tables (algorithm), must also be examined for inventive step along with the technical features. (...)
DE 4/93