The BPatG declared a computer method for data identification with a word processor invalid – after the patent had expired due to the passage of time. An intervening party was also able to intervene in the court proceedings – even after the expiry of time.
The European patent EP1171836 was declared invalid in August 2021 with effect for the territory of the Federal Republic of Germany (BPatG, 7 Ni 36/19 (EP) combined with 7 Ni 37/19 (EP), public since 10.12.2021).
The patent in suit is called “Function Key for Computer Data Handling” in the classification “Converting codes to words”. It was filed on 2 September 1999 as international application PCT/NO99/00273, and accordingly lapsed in September 2019 due to the passage of time.
Nevertheless, intervener 1 was able to intervene in the revocation proceedings 7 Ni 36/19 (EP) against this patent until after the expiry of the patent in September 2020; it justified this on the grounds that it was being sued by a licensee of the defendant for infringement of the patent in suit before the Düsseldorf District Court (LG Düsseldorf). Two plaintiffs and two intervening parties challenged the patent in suit in Germany, each with an action for revocation; the two actions for revocation were combined by the court into one action.
The patent in suit
The patent in suit describes a method of providing a functional element in a word processor linked to a user operation and user data identification. It is a method of inserting and adding data within an application program on a computer, in particular a word processor or word processor, the patent specification cites, for example, Microsoft Word, Notepad, Excel, Wordpad, WordPerfect, Quattro Pro or Ami Pro.
Computer Data Identification: inadmissible extension?
The applicants claimed an inadmissible extension of the original patent application of the patent in suit. Only in the features of the patent in suit was a restriction to a user identification of only an address or a name inserted; in the original patent application, a user could still be identified by many different indications. This was not a permissible specification, the applicants argued.
The proprietor of the patent in suit disagreed. It made no difference to the technical design of the search program according to the invention, he explained, whether it searched only for names and addresses or also for further address- or name-related information. The underlying algorithm was the same.
In its decision on this plea, the German Federal Patent Court referred to a European decision. It may be clear from the patent specification in dispute that either “only names” or “only addresses” are used as search terms, but not “only names and only addresses”. Therefore, only names and/or addresses (and nothing else) were identified in the present patent in suit (following decision T 1779/09), decided the BPatG.
Feature M1.3.1 was therefore not to be classified as an aliud because it did not introduce a new technical aspect. Rather, it was a mere limitation in the present case, which is why feature M1.3.1 can remain in claim 1 of the patent in suit.
However, feature M1.3.1 does not make a technical contribution, the court added, and is therefore not to be taken into account when examining the invention for inventive step.
Computer Data identification: lack of patentability?
However, the patent in suit was also opposed by several relevant publications, in particular HLNK8 (HLNK8 = US 5 579 467 A). This publication also describes a method in a word processor and, in the opinion of the BPatG, the teaching according to the granted patent claim 1 differs from the teaching of HLNK8 only in that the text entered by the user is not searched for the five classes of information elements (persons, (geographic) locations, events, times and dates) as in print HLNK8, but that the search is to be limited exclusively to names of persons and/or places or addresses.
However, the question of whether the program for analysing text objects described therein should form an integral part of the word processor or whether it should be an independent software module separate from the word processor according to BPatG was not addressed to the person skilled in the art for the patent in suit, a development engineer. Rather, the question concerned the programming technique as such, decided the BPatG, which is given to the technical developer by a system designer within the framework of a specification. But because the remaining distinguishing feature accordingly contributed nothing to a technical solution of the problem, it was not to be taken into account in the examination for novelty and inventive step, the court ruled.
Therefore, the action was allowed for lack of patentability (Art. II § 6(1)(1) IntPatÜG, Art. 138(1)(a) EPC in conjunction with Art. 54, 56 EPC). The European patent 1 171 836 was declared invalid by the BPatG with effect for the territory of the Federal Republic of Germany.
Action after expiry of the patent: admissible?
The actions of the first and second plaintiffs remain admissible even after the expiry of the patent in suit due to the passage of time on 2 September 2019. The intervention of the intervening 1st and 2nd plaintiffs, to which the defendant did not object, is also admissible, as the plaintiffs have a legitimate interest in legal protection, which is generally required for an action after the lapse of a patent.
The BPatG also commented conclusively on the requirements for intervening in patent revocation proceedings. Intervening in patent revocation proceedings was admissible if the intervening party was a company and could be adversely affected in competition by the patent in suit (see BGH GRUR 2006, 438 – Carvedilol I).
Admittedly, intervener 1 had already filed its own invalidity action before it joined (7 Ni 7/20 (EP). However, this was admissible, the BPatG stated, because in this constellation the intervening party’s own invalidity action did not represent a more efficient legal protection option compared to intervening in the appeal proceedings, because in the usual course of the appeal proceedings an earlier decision on the validity of the patent could be expected.
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