Monday, 9 November 2015

BGH on Patentability of Mathematical Methods - "Flugzeugzustand"

The decision BGH X ZR 1 /15 "Flugzeugzustand" relates to the patentability of a mathematical method used in the context of monitoring airplane machinery. A rough (and non-official) translation of the headnote is as follows:
a) In view of §1 par. 3. Nr. 1 PatG, mathematical methods are patentable only when they contribute to the solution of a specific technical problem with technical means.

b) A mathematical method can be considered non-technical only when it does not have, in the context of the claimed teaching, any relation to the purposeful use of natural forces.

c) A sufficient relation to the purposeful use of natural forces exists when the mathematical method is used for the purpose of obtaining more reliable information on the state of an airplane using the available measurement data to thereby influence the functioning of the system used for detecting that state. 
d) Subject-matter which is novel and based on an inventive step cannot be considered non-patentable only because it does not offer any recognizable advantage over the prior art.
The decision clarifies that the exception of §1 par. 3. Nr. 1 PatG has to be interpreted very narrow and that even a remote relation to a tangible technical device ("the purposeful use of natural forces") is sufficient.

Letter d) highlights an interesting contrast between the German case-law and the case-law of the technical boards of appeal, where a technical advantage is sometimes required.


Jeremy Nicholls said...

Interesting judgement, but the conclusion is surely not so surprising, is it?. If the thing is new and inventive, then that's that. A technical advantage is not a requirement of patentability (although it may provide evidence of inventive step). The technical boards of appeal may require a technical effect, but do they really demand a technical advantage?

Michael Thesen said...

Well, the mix of advantage and technical effect would be the advantageous technical effect mentioned in R42(1)c EPC. This technical effect is supposed to be at least the starting point for the invention and is referred to in the "could-would approach" (.... . if the skilled person would have done so in expectation of some improvement or advantage). It is true that, in the absence of a technical advantage, the EPO formulates the problem as "to provide an alternative" but this is (in my experience) mostly followed by the statement that the modification is arbitrary and therefore obvious.

The Germans have dispensed with the "Fortschrittserfordernis" (requirement of technical progress) some time ago but it is still lingering in the background. I think that this point is interesting because of the interplay with obviousness: The more disadvantageous a solution, the less obvious it is for a reasonable person skilled in the art.

Jeremy Nicholls said...

Rule 42(1)c says that the description must "state any advantageous effects". This wording clearly acknowledges that there may be no advantage in the invention. Quite right, too. Novelty and inventive step are what's needed.

Note also that R42(1)c does not speak about advantageous technical effects. The advantages may be entirely non-technical (cheaper, more attractive etc).