In a long expected decision, the German Federal Supreme Court ruled patent claims regarding a storage medium (such as a diskette) with a computer program stored thereon are allowable as long as the program itself is patentable. With its decision, the Federal Supreme Court overruled a previous decision by the German Federal Patent Court, which had rejected the patent application for the storage medium. Decision of the German Federal Supreme Court, Case No. X ZB 16/00 (BPatG).

The case related to a patent application for a computer system for computer-aided spell checking in word processing software. The German Patent and Trademark Office had allowed the patent claim for the computer system as such but refused to grant the patent for the storage medium where the computer program was stored on. The German Federal Patent Court had confirmed this decision on the grounds that claims for a storage medium did not comprise the essential means for a technical solution and were exempted from patent protection pursuant to Section 1(2)(iii) of the German Patent Act. In accordance to Section 52(2)(c) of the European Patent Convention, this provision of the German Patent Act excludes computer programs as such from patent protection.

In its decision, the German Federal Supreme Court held that the patent court’s interpretation of the exclusion for computer programs had been too narrow. Despite the exemption relating to computer programs, the Federal Supreme Court found that claims directed to computer programs are patentable if the claimed invention contributes to the solution of a specific technical problem. The Federal Supreme Court also offered an answer to the obvious question "when does a computer program contribute to the solution of a specific technical problem?" The court explained that a program may be patentable if it is involved in a technical process, for example, in measuring the results or monitoring the operation of some technical device. Claims may also be patentable if they related to data processing equipment that checks and compares data and, thus, operates as an intermediate step within the framework of manufacturing technical objects, provided that such a solution is based on technical considerations and the realisation or implementation of the solution. The same standard applies if the subject matter relates to the functioning of data processing equipment and enables immediate interaction of the elements of the data processing equipment.

Having outlined the prerequisites for patent protection for computer programs, the German Federal Supreme Court concluded that the applicant’s claim for a storage medium was also patentable subject matter, reasoning that if the program stored thereon was patentable, a patent claim relating to the storage medium as a physical object is nothing more than a special embodiment of the inventive idea as already claimed in the process claim relating to the computer program.

Practice Note: The German Federal Supreme Court’s decision is a fundamental ruling for companies involved in software development. It outlines the prerequisites under which computer programs can be subject to patent protection, despite the exemption for computer programs pursuant to the German Patent Act. Secondly, it reminds software developers to include in their patent application a claim for the storage medium. Covering the storage medium will make it easier for the patentee to claim infringement when diskettes or other media with the program are distributed.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.