For many software developers or small companies, the term "patent" sounds promising: exclusive exploitability for 20 years, patent protection even with only corresponding designs, comprehensive rights up to and including customs seizure. On closer inspection, however, the requirements for granting a patent on software are high. We present the essential points on this topic.
What is a patent?
Pursuant to Section 1 (1) Patent Act (PatG), patents are granted for inventions in all fields of technology, provided they are new, involve an inventive step and are susceptible of industrial application.
An invention is new if it has not previously been part of the state of the art.
An inventive step exists if the invention sufficiently distinguishes itself from the prior art.
According to Sec. 5 Patent Act, an invention is considered to be industrially applicable if it can be made or used in any industrial field.
How do you define software?
Software is an umbrella term for programmes and associated data. It is therefore the intangible part of a computer-based system. Copyright law also recognises the term computer program as a special type of software. A characteristic feature of a computer program is an executable sequence of instructions by which the computer performs certain functions.
Is software protected in the "classical" sense?
If software is a computer program under Section 69a of the Copyright Act, it is protected by copyright under Sections 69a et seq. of the Copyright Act. In the event of an unauthorised act, the owner of the property rights (usually the creator of the computer program) can claim against the infringer for injunctive relief, information or damages, for example.
Can software be patented?
The problem is that software "as such" cannot be patented under Section 1 (3) no. 3 PatG. This means, in short, that software cannot be patented merely because it is new, sufficiently different from the previous state of software technology and commercially applicable.
The decisive factor is the so-called "technicality". According to the case law of the Federal Court of Justice, the invention (= the software) must serve to solve a concrete technical problem by technical means.
Thus, if the invention (= the software) has the sole effect of running a non-technical process on a computer, this does not satisfy the requirements for technicality.
When is software patentable?
To start with: Whether software is patentable or not is always a question of the individual case. In this respect, we only provide a rough guide below:
The first step towards patentability is usually taken when software is combined with some form of hardware. In this case, one often speaks of "computer-implemented inventions". The necessary technicality may be present in computer-implemented inventions, for example, if,
- certain process steps are processed by the computer for the purpose of a technical problem solution,
- the operation of technical equipment is controlled, regulated or monitored, or
- the invention enables the functioning of a computer.
What do you have to pay attention to in the run-up to a patent application?
- Check whether it is worth the effort: It is possible that the invention you are thinking about is already patented. Do some research or have someone do it for you in the relevant databases.
- Keep your invention secret: Any information about your invention that you disclosed to the public before filing the application could jeopardise the novelty. A technical lecture, for example, would also fall under this.
- Patents are industrial property rights. Can your software be used commercially at all? If not, you will not receive a patent for that reason alone.
What can you do about an infringement of your patent?
You have finally obtained the coveted patent on your invention. If a person or company infringes your patent commercially, you are entitled to the following rights:
- Patent infringement action pursuant to Section 142a PatG, if necessary as an interim injunction; in a patent infringement action you can assert claims for injunctive relief, disclosure, destruction or damages.
- Request for border seizure under Sec. 142a Patent Act.
- Criminal complaint under Sec. 142 PatG.
You can take action against patents of third parties that infringe your patent by filing an opposition under Sec. 59 (1) sentence 1 Patent Act or by filing an action for revocation under Sec. 81 (2) Patent Act.
The topic of patents on software is complex, but possibly also worthwhile. We can gladly assist you with this topic based on our many years of experience.
GoldbergUllrich Lawyers 2021
Julius Oberste-Dommes LL.M. (Information Law)
Lawyer and
Specialist lawyer for information technology law
