Pages 454-461

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

DE Germany

Decision of the Bundesgerichtshof (Federal Court of Justice), 10th Civil Senate, dated 11 May 2000 - (X ZB 15/98)^*

Headword: Sprachanalyseeinrichtung (Language analysis device)

Section 1(1) DE-PatG 1981 (Patent Law)

(Article: 52(1), (2)(c) and (3) EPC)

Keyword: "Technical character of a computer – Inventive step of subject-matters encompassing technical and non-technical elements"

Headnotes

(a) An apparatus (computer) which is programmed in a specific way has technical character. This applies even if texts are edited on the computer.

(b) For the purpose of assessing the technical character of such an apparatus it is not relevant whether the apparatus produces a (further) technical effect, whether technology is enriched by it or whether it makes a contribution to the state of the art.

(c) The technical character of the apparatus cannot be challenged on the ground that there may be human intervention in the execution of the computer program.

Summary of facts and submissions

I. The applicants filed a patent application with the German Patent Office under the title "Dialogue analysis device for natural language" on 17 May 1990 (...). Examining section (...) refused the application, and the applicants lodged an appeal against that decision. In the course of the appeal proceedings the applicants ultimately requested the grant of a patent with claim 1 reading as follows:

"Language analysis device of the dialogue type having:

(a) a sentence input device (1) to input a text to be analysed in a language, each sentence of the text comprising syntactic units,

(b) a dictionary device (4), in which syntactic units are stored and from which attributes for syntactic units can be extracted,

(c) a grammar device (5) which, for the language of the text, holds the possible linguistic relationships between syntactic units, to each of which an attribute is assigned, the content of the dictionary device (4) and the grammar device (5) being stored in a memory,

(d) an identification device (2) which, by means of the dictionary device, divides the sentence into syntactic units and identifies possible attributes for each syntactic unit and, by means of the grammar device using the attributes recognised as possible, identifies all possible linguistic relationships between the attributes assigned to each syntactic unit, each thus identified possible linguistic relationship between the syntactic units of the sentence being a candidate relationship that may be correct, and

(e) a dialogue selection device (9) by which, in dialogue with a user, if more than one candidate relationship is possible for a syntactic unit a correct relationship can be selected from the candidate relationships on the basis of a command input from an operating unit,

characterised by

(f) an evaluation block (8), which evaluates the candidate relationships for their greater or lesser probability of correctness, and by

(g) a preference analysis device (10) which, if no clarifying selection has been made for a plurality of candidate relationships via the dialogue selection device, selects as correct the candidate relationship evaluated as the most probable by the evaluation block." (...)

The Bundespatentgericht (Federal Patent Court) dismissed the appeal. The decision is published in BPatGE 40, 62 and Mitt. 1998, 473. The applicants lodged an appeal on a point of law (...) requesting that the decision under appeal be set aside (...).

II. The appeal on a point of law (...) is successful.

1.(a) The Federal Patent Court held that the subject-matter of claim 1 (...) was not patentable because it did not involve technical skill. The fact that a claim related to a device (apparatus) did not automatically mean that a subject-matter was to be regarded as a patentable invention. A subject-matter encompassing technical and non-technical elements comprised a patentable invention only if it contained a contribution to the state of the art and this contribution also met the other patentability criteria. The contribution distinguishing the subject-matter of claim 1 from known language analysis devices consisted in the teaching to evaluate a sentence structure for possibly correct candidate relationships using an evaluation block and to use a preference analysis device to select the highest-probability candidate relationship where the selection was not made by users themselves. This was dependent upon a linguist initially establishing the probability for the individual interpretation options and was therefore a non-technical solution.

The applicants were, however, requesting protection for a device that worked automatically according to specific grammatical discoveries. It was then a matter for the person skilled in the art of data processing to convert the non-technical discoveries into the technical device required for this purpose. The skill to be exercised by this skilled person consisted merely in creating a grammar analysis program to be loaded onto a conventional computer and executed by it. This was within the realms of standard practice for the skilled person and did not enrich the state of the art. No other technical skill was either discernible or necessary to convert the non-technical discoveries into a technical device with a suitable mode of operation.

The Court also held that the claimed sentence analysis and assignment of probabilities to specific sentence structures did not constitute a sequence of individual technical measures that made the program on which the invention was based a patentable "technical program". The text was compressed where applicable according to grammatical and therefore non-technical aspects. The claimed language analysis device did not in the end teach a new utility for a computer.

(b) The appeal on a point of law challenges the Federal Patent Court view that the subject-matter of claim 1 of the application in suit was not technical (...). An independently operating device using energy to implement the technical teaching was technical.

The appeal on a point of law also objects to the Federal Patent Court view that initially what was needed was the non-technical skill of a linguist who knew that in the absence of an unambiguous analysis of meaning he had to resort to statistical probability, and whose discoveries had to be converted into a technical device. (...)

Finally, according to the appeal on a point of law the Federal Patent Court had inadmissibly mixed arguments relating to inventive step with arguments relating to technicality. It had also failed to appreciate the technical steps involved in a technical compromise between an optimal textual analysis using just a dialogue procedure and a fully automatic textual analysis which inevitably produced a suboptimal result.

(c) The objections of the appeal on a point of law that the decision rested on an infringement of Section 1 of the Patent Law are justified in their conclusions. The Federal Patent Court's assessment that the inventive concept did not include technical teaching does not bear scrutiny in law.

(aa) According to its claim 1, the patent application in suit relates to a language analysis device with specific components (...)

As the Federal Patent Court held, it is a device that can be realised using a conventional computer and the evaluation block and preference analysis device can be realised by both hardware and software. This system also requires an input device and a display device. The other features describe the functional means by which text editing can be carried out (...).

(bb) According to the Federal Patent Court, the claims are therefore directed to an apparatus (computer) that is programmed in a specific, carefully defined way. They are not therefore directed to a method or a program. Contrary to the Federal Patent Court view, such an apparatus can readily be held to have the necessary technical character.

(1) According to the Senate's established case law in respect of both the national and European laws in force, patent protection is granted only for inventions in the field of technology (BGHZ 115, 23, 30 - chinesische Schriftzeichen (Chinese characters)1; Senate Decision dated 13 December 1999 - X ZB 11/98 - Logikverifikation, proof p. 10 ff, scheduled for publication in BGHZ; see BGHZ 117, 144, 148 ff - Tauchcomputer (Diving computer)2). The term "technology" or "technical" as understood by patent law is not defined in detail in the Patent Law. Its meaning cannot be clearly and conclusively established as a legal concept to define what can be protected by industrial property rights. On the contrary it is conditional upon an assessment (see in this context Senate Decision Logikverifikation, loc. cit. 12 ff) of what is technical and therefore should be patentable. It is therefore also a development of what is usually understood by the term "technology" or "technical". This must include an apparatus which can be made and used in industry, for whose operation energy is used ("consumed") and inside which different circuit states occur. This is the case not only with a mainframe computer but also with a specially configured computer (for the technical character of a system of this kind, see BGHZ 67, 22, 27 ff - Dispositionsprogramm; BGHZ 117, 144, 149 - Tauchcomputer (Diving computer)²; BPatG GRUR 1999, 1078 ff = Mitt. 2000, 33 ff - automatische Absatzsteuerung; also Melullis, GRUR 1998, 843, 848, 850). The fact that the computer is programmed in a specific way does not deprive it of its technical character. On the contrary this merely adds to the computer, as technical subject-matter, further properties whose inherent technical character is not important for the assessment of the technical character of the system as such. The fact that a computer as such has technical character has, moreover, never been seriously contested as far as the Court is aware. The "technicality" debate is concerned mainly with programs executed on such computers and with methods that make use of them. That is not the issue here.

For this reason and because this case does not concern the application of the exclusion from patentability of programs for computers as such (Section 1(2), point 3, and Section 1(3) Patent Law), it is also irrelevant in the present case whether, as the European Patent Office considers necessary for software-related inventions (EPO T 1173/97, OJ EPO 1999, 609, 620 ff - GRUR Int. 1999, 1053 - Computer program product/IBM), the product produces a further technical effect which goes beyond the "normal" physical interactions between program and computer (see also Melullis, loc. cit., 850). All the less relevant to the assessment of the technical character of the claimed system will be the question of whether or not it enriches technology or makes a contribution to the state of the art. A known apparatus that is technical per se can likewise not be said to lack technical character because it adds nothing to technology. Whether technology is enriched or a contribution made to the state of the art should in any case be considered only during the examination for patentability, if there is still room for it now that the technical progress requirement for patentability has been dropped.

(2) There is no need to consider whether the teaching on which the application is based would be excluded from protection as non-technical or on the ground of a breach of the exclusion from patentability in Section 1(2), point 3, of the Patent Law if it had been claimed as a method claim or in the form of a program. In law there is, in any case, no general prohibition on the patenting of teachings using programs for computers. This was already borne out by Section 1(2), point 3, of the Patent Law and the parallel provision in Article 52 EPC using argumentum e contrario and is now confirmed by Article 27 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). As far as the Court is aware, this also accords with the general view held in the case law and literature (see only Senate Decisions dated 7 June 1977 - X ZB 20/74, GRUR 1978, 102 ff - Prüfverfahren; dated 13 May 1980 - X ZB 19/78, GRUR 1980, 84 ff - Antiblockiersystem; BGHZ 115, 11 ff - Seitenpuffer (Cache)3; EPO T 1173/97, OJ EPO 1999, 609, 619 ff - Computer program product/IBM; Benkard PatG/GebrMG, 9th edition, Section 1 PatG, point 104; Busse, PatG, 5th edition, Section 1 PatG, point 45; Schulte, PatG, 5th edition, Section 1 PatG, point 77; Mes, PatG, Section 1, point 57).

(3) Absence of technical character would again not be a bar to patentability if the teaching on which the application is based were to have elements pertaining to the revision of language texts. Revision of this kind (text editing) as such could not, however, be readily classed as belonging to the field of technology (on this subject see, for example, EPO T 38/86, OJ EPO 1990, 384 - GRUR Int. 1991, 118 - Text processing). A computer on which texts are processed (edited) is still, however, a technical subject-matter. The only possible doubtful point in this context is the extent to which the examination as to patentability should take account of elements that do not have a technical character as such. On this point the Senate held in another matter that, if an invention contains technical and non-technical features, its entire subject-matter, including any method of calculation, must be examined for inventive step (BGHZ 117, 144, 150 - Tauchcomputer (Diving computer)²). Doubts have been expressed (Melullis, loc. cit., 846, left-hand column) as to whether the content of the information to be processed could also be considered, which would go against the conventional view that "mental instructions" should not be taken into account (see, for example, Senate Decision dated 18 March 1975 - X ZB 9/74, GRUR 1975, 549 ff -Buchungsblatt). This question does not appear to arise in the present case, however, if only because the application is certainly not limited to such contents.

(4) Finally, the technical character of the apparatus cannot be challenged on the ground that, according to feature (e) of claim 1, there may be human intervention in the execution of the program to be run on the computer. The fact that the human mind can be used without necessarily departing from the realm of the technical is evident if only from the fact that systematic teaching using controllable natural forces to achieve a result with clear cause and effect is open to patent protection (BGHZ 53, 74, 79 - rote Taube). (...)

2. The contested decision has not proved to be correct on other grounds either (...). Although the Federal Patent Court also considers in passing (reasons in II. 2. b and c) whether the subject-matter of the application involves an inventive step, its appraisal is based on an assessment of the patentability of programs. This is not an issue in the present case, however, because an apparatus and not a program is claimed in claim 1. For this reason alone the decision does not meet the requirements for examination as to inventive step. Furthermore, the Federal Patent Court does not base its view on the subject-matter of claim 1 in its entirety, as it should have done. The complete disregard of the "non-technical discoveries" on which the subject-matter of the application is based also conflicts with the principles evolved in the case law for the assessment of inventive step in the case of inventions in the field of data processing (see Senate Judgment Tauchcomputer (Diving computer), loc. cit.).

III. In view of the above, the decision under appeal can have no legal validity and must therefore be set aside (...).

DE 4/02