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Patents
GERMANY
Federal Supreme Court close to accept patentability of business methods?
Prepaid telephone calls - X ZR 214/01
The Federal Supreme Court announced a nullity decision relating to the question of which subject matter is patentable according to the European Patent Convention. A method solving the problem of how to enable prepaid telephone calls by means of public telephones without card readers was held to be patentable.
The Federal Supreme Court announced a nullity decision relating to the question of which subject matter is patentable according to the European Patent Convention. A method solving the problem of how to enable prepaid telephone calls by means of public telephones without card readers was held to be patentable.
Claim 1 of the patent-in-suit, namely EP 0 572 991 B1 reads as follows: "A method of processing telephone calls, particularly for use in connection with public telephones, comprising the steps of
• programming a respective Public Automatic Branch exchange (PABX) to become toll-free accessible for incoming calls through dialling any one out of a series of predetermined numbers stored in a databank of the PABX;
• enabling a calling party to complete a connection with a called party;
• cutting off the said connection after a prefixed time/counter pulses interval;
• erasing from the databank any number that had once been dialled;
• marking the said series of numbers, each on a vendible carrier member in an invisible - however readily exposable - manner; and
• offering the vendible carrier members for sale to the general public, so that purchasers of the carrier members, after exposing the respective number, are enabled to place a call for the duration of the said interval."
The closest prior art document was held to be US 4,706,275 which discloses a method for processing telephone calls having the above features (a) to (c) and (f). Therefore, the subject matter of the patent-in-suit differs from these prior art documents by the above features (d) and (e).
The Federal Supreme Court had to decide on the question of whether the claimed subject matter is excluded from patentability according to Art. 52 (2) (c) EPC which states that "schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers shall not be regarded as inventions within the meaning of Art. 52 (1) EPC". This provision in essence runs contrary to the US case law which allows patentablity of "anything under the sun that is made by man" (see Diamond v. Chakrabarty, 447 U.S. 303, 309; 206 USPQ 193, 197, 1980).
The Federal Supreme Court held that the above claim 1 is not excluded from patentability according to Art. 52 (2) (c) EPC. The invention relates to the problem of how to enable prepaid telephone calls by means of public telephones without card readers. According to the opinion of the Federal Supreme Court, the patent-in-suit thus also contains features that are based on a specific technical problem which is to be solved by technical means. With that, the Federal Supreme Court takes a more liberal position compared to the European Patent Office (for latest developments see http://cii.europeanpatent-office.org/). It appears that the Federal Supreme Court is willing to accept patentability of business methods (although in the reasoning it only discusses "methods for performing mental methods") if technical means are used and if the patent attorney who drafted the application documents emphasized the technical aspects of the invention.
Reported by Dr. Frank Peterreins
Bardehle Pagenberg Dost Altenburg Geissler
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