Pages 215-221

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

DE Germany

Decision of the Bundespatentgericht (Federal Patents Court) dated 6 May 2003

(21 W (pat) 12/02)1

Headword: "Rentabilität eines medizinischen Geräts" (Profitability of a medical apparatus)

Section 1(2) point 3 PatG (Patent Act)

Keyword: "Methods for doing business - Use of a computer - Technical character of the invention"

Headnote:

I. A method for determining the profitability of a medical apparatus from data on the use of the apparatus, the remuneration of the operator and fixed costs, which neither involves monitoring technical equipment or measuring values nor has any regulating or controlling effect, but serves exclusively to track business processes, is no more than a rule for doing business and is excluded from patentability under Section 1(2), point 3, PatG.

II. Determining business data by automatic means can in itself be technical, but for the teaching of the method claimed here, this is merely an incidental measure supplementing the business method, which also applies in the same way to the use of a computer, in the present case according merely to its normal purpose, to determine profitability automatically.

III. A concrete apparatus, in the sense of a physical entity made for a specific purpose, is technical per se, so that an apparatus configured in a particular, carefully defined way can readily be held to have technical character.

Reasons

I. The patent application, with the title "Method for determining the profitability of a medical apparatus", was filed on 25 July 2001 with the German Patent and Trade Mark Office. By a decision of 5 February 2002, the examination section for Class A 61 B refused the application because the ... claimed method was by its nature non-technical. This decision is the subject of the appeal. The appellant's main request and an auxiliary request are directed towards further prosecution of the patent application.

According to the main request, the subject-matter of the application has the purpose of indicating a method for determining automatically whether the acquisition or replacement of a medical apparatus is economically profitable. A further purpose of the invention is to implement a system in such a way that it can serve to determine automatically whether the acquisition or replacement of a medical apparatus is economically profitable. ...

The existing patent claim 1 according to the main request reads as follows:

"Method for determining whether, for an operator (2) of at least one medical apparatus (1 a-1 c), the acquisition of a further medical apparatus or a replacement of the first medical apparatus (1 a-1 c) is economically profitable, comprising the following steps:

• Automatic determination, by the first medical apparatus (1 a-1 c) during use, of a first set of data (30) describing use of the first medical apparatus (1 a-1 c),
• Automatic transmission of the first set of data (30) to a central database (10),
• Determination of a second set of data (31) describing a remuneration of the operator (2) on the basis of the use of the first medical apparatus (1 a-1 c),
• Determination of a third set of data (34) comprising the fixed costs incurred by the operator (2),
• On the basis of the first (30), second (31) and third (34) sets of data, the determination, by an evaluating device (12) linked to the central database (10), of a profitability (38) of the first medical apparatus,
• On the basis of the first (30), second (31) and third (34) sets of data and of the profitability (38) of the first medical apparatus (1 a-1 c), the determination, by an evaluating device (12) linked to the central database (10), of a potential profitability of the further medical apparatus or of a replacement for the first medical apparatus."

Independent claim 9 corresponds to claim 1 according to the auxiliary request (see below), with the difference that the main request uses the term "system" instead of "device".

Claim 1 according to the auxiliary request reads as follows:

"Device for determining whether, for the operator (2) of at least one medical apparatus (1 a-1 c), the acquisition of a further medical apparatus or a replacement of the first medical apparatus (1 a-1 c) is economically profitable, comprising

• a central database (10) capable of being connected to a communications network,

the first medical apparatus (1 a-1 c), configured so as to automatically determine a first set of data (30) describing its use and transmit that data via the communications network to the central database (10), and

• an evaluating device (12), connected to the central database (10) and configured so as to describe, on the basis of the first set of data (30), a second set of data (31) stored in the central database (10) describing a remuneration of the operator (2) on the basis of the use of the first medical apparatus (1 a-1 c), and a third set of data (34) stored in the database (10) and comprising the fixed costs incurred by the operator (2), a profitability (38) of the first medical apparatus, and, on the basis of the first (30), second (31) and third (34) sets of data and of the profitability (38) of the first medical apparatus (1 a - 1 c), a potential profitability of the further medical apparatus or of the replacement of the first medical apparatus."

...

II. The applicant's appeal is admissible. It is not allowable in so far as it concerns claim 1 according to the main request, since the claimed subject-matter does not have the required technical character. However, the appeal is allowable in so far as it concerns claim 1 filed in the appeal proceedings as part of the auxiliary request, since the latter claim involves new facts, which cast doubt on the reasons supporting the contested decision but which the Patent Office has not yet been able to examine in full (PatG Section 79(3), first sentence, points 1 and 3).

A. Main request

The subject-matter of the existing claim 1 is disclosed in the original documents.... . However, it lacks the required technical character.

Under Section 1(1) PatG , patents are granted for inventions which are new, involve an inventive step and are susceptible of industrial application. The highest national courts have consistently ruled that an "invention" - a term not defined further in the Patent Law - must be a teaching in the field of technology (BGH GRUR 2000, 498 - "Logikverifikation", II 4 d), with further references).

According to the case law of the Federal Court of Justice, the requirement for technical character is fulfilled if, inter alia, the characterising instructions of a claimed teaching solve a specific technical problem (BGH GRUR 2002, 144, 145 - "Suche fehlerhafter Zeichenketten"). Under these conditions, a claimed teaching is also eligible for patent protection if it is to be protected as a computer program or as some other embodiment used by a computer. The assessment of technical character according to Section 1 PatG requires a general appreciation of what the main thrust of the claimed teaching is (BGH GRUR 2000, 498 - "Logikverifikation", II 4 d), with further references).

Claim 1 concerns a method for determining whether, for an operator of at least one medical apparatus, the acquisition of a further medical apparatus or a replacement of the first medical apparatus is economically profitable. The teaching of the method according to claim 1 has, as its main thrust, the determination, in terms of business economics, of profitability of the first medical apparatus from the data on the use of the first medical apparatus, the remuneration obtained by such use, and the relevant fixed costs, and, on that basis, the determination of whether the acquisition of a further medical apparatus or the replacement of the first medical apparatus is economically profitable.

The teaching of claim 1 is thus no more than a mental rule for doing business: specifically, an instruction for processing factors in business economics. The first medical apparatus, as a physical entity, is neither developed further nor in any way controlled or regulated by the method according to the application; instead, the mention of this feature limits the otherwise generally applicable business method to a concrete case, without imparting a technical character to the teaching for doing business. The fact that the determination of the various data and of profitability occurs automatically does not confer technical character on the teaching considered as a whole. Determining data by automatic means can in itself be technical, but for the teaching of the method according to claim 1, this is merely an incidental measure supplementing the business method, which also applies in the same way to the use of a computer, merely in accordance with its normal purpose, to determine profitability or, on the same basis, potential profitability, automatically.

...

The method according to claim 1 therefore lacks the required technical character. This means that claim 1 is not allowable. The remaining claims 2 to 9 also fail, as a decision can only be taken on the application as a whole.

B. Auxiliary request

The present claim 1 is disclosed … in the original documents and is therefore admissible. Claim 1 concerns a device for determining whether, for an operator of at least one medical apparatus, the acquisition of a further medical apparatus or a replacement for the first medical apparatus is economically profitable.

Here, the claimed subject-matter is technical, since a concrete apparatus, in the sense of a physical entity made for a specific purpose, is technical per se. An apparatus configured in a particular, carefully defined way can readily be held to have the required technical character (BGH BIPMZ, 2000, 276 - "Sprachanalyseeinrichtung", II 1 bb; EPA GRUR Int. 2002, 87 - Controlling pension benefits system/PBS PARTNERSHIP2).

This continues to apply where the device is used for activities of a non-technical nature, such as word-processing or doing, or helping to do, business. Nor is this a special case where the device claim is also directed to the implementation of method claims and an assessment must be made of the category to which the relevant claim belongs (see BGH GRUR 2002, 145 - "Suche fehlerhafter Zeichenketten"). The device according to claim 1 is characterised by its technical features, such as the medical apparatus, the transmission facilities and the computer. The business aspects merely add further characteristics, without depriving the specific technical device of its technical character. Nor is this contradicted by the fact that a corresponding method, as explained, lacks technical character, since under Section 1(2), third sentence, PatG, methods for doing business are expressly not to be regarded as inventions within the meaning of Section 1 PatG.

The subject-matter of claim 1 therefore has the required technical character.

Since the previous examination of the application was directed only to the question of technical character ... and the possibility cannot be ruled out that a search on the features of the present claim 1 according to the auxiliary request might reveal further relevant prior art, the case was to be referred back to the German Patent and Trade Mark Office. ...

DE 2/05