[FFII] Dispositionsprogramm decision translated (fwd)

[PILCH Hartmut]

The FFII has provided a translation to English of one of the most detailed
of a series of German court decisions on the limits of patentability and
the concept of technical invention from the 70s, the time in which the
European Patent Convention (EPC) was framed.

These court decisions have been much admired because of the general
philosophical nature of their explanations.  They provide a rule of
limiting patentability, which could be applied without ambiguity today
just as in the 1970s and which, as the court explains in the
Dispositionsprogramm verdict, is founded in customary law, constitutional
considerations and objective necessities.  It is the only known clear rule
for limiting patentability and for abiding by Art 52 EPC in the required
systematic way.

Gert Kolle, at the time a scholar of software and patent law, today an
official of the European Patent Office (EPO), further deepened this
discussion by an extensive review of the Dispositionsprogramm decision

       http://swpat.ffii.org/vreji/papri/grur-kolle77/

which was again taken up favorably by the Federal Court (BGH) as well
as by the EPO guidelines of 1978 and, in somewhat diluted form, 1985.
The Federal Court clarified in another landmark decision of 1980 that
rules of organisation and calculation do not become technical just by
the fact that they are claimed as part of a technical process
applicable to industrial production:

       http://swpat.ffii.org/vreji/papri/grur-walzst80/

Many other important article in need of translation can be found via

       http://swpat.ffii.org/vreji/papri/
       http://swpat.ffii.org/stidi/korcu/

We would like to have more of these and other decisions and articles
published/reviewed online and translated to English and other
languages and would be grateful for a donation with this purpose.  You
can send a cheque with specific wishes to

       DE-80636 Muenchen Blutenburgstr 17 / FFII e.V.  / Hartmut Pilch

and will receive a tax-deductible receipt.

Here are some excerpts from the Dispositionsprogramm verdict.  We suggest
that all those who make public comments about patentability learn this
verdict, at least the concluding passages, by heart. Either for delight in
its well-crafted thoughts and words or as a punishment for having --
"naively or wilfully" (Kolle) -- engaged in a savage attack against the
constitutional order and the patent system, both of which highly value the
need to keep the use of the realm of matter-independent abstract thought
free from monopoly claims and penal threats -- no matter whether
implemented in the brain, with pencil and paper or with today's
predominant civilisation utensil: the universal computer.

-------------------

http://swpat.ffii.org/vreji/papri/bgh-dispo76/indexen.html

BEGIN Dispositionsprogramm decision

   The German Patent Office has on 1971-10-28, after an opposition
   proceding, decided to grant a patent for an application from
   1960-12-20 concerning a process for determining changes in a
   multiplicity of entities -- e.g. for solving disposition problems --
   with help of a computer. Claim 1 reads:

     Process for determining changes in a multiplicity of chief entities
     and partial entities from which the chief entities are composed
     stepwise, with help of a computer comprising at least two external
     memory units on the input side and two such units on the output
     side, such that ..., characterised by the fact that ...

   Claims 2 to 5 concern further elaborations of the applied-for process.

   On complaint by the opponent, the Federal Patent Court (BPatG) has
   revoked the granting decision and denied the patent.

   Against this decision a legal complaint was admitted but remained
   without success.

   The Federal Patent Court gave as a reason for denying the patent that
   the applied-for process was essentially a pure organisation plan which
   as a mere "instruction to the human mind" has no technical character.
   This organisation rule was constructed in such a way that it utilised
   the normal possibilities of a computer as known from prior art.
   Therefore the weight of the invention did not lie in the field of
   technology and could on the whole be found without any need of
   considerations that belong to the technical realm.

   2. ...

   The attacks of the legal complaint remain without success.

   ...

   The teaching that is claimed to be new and inventive does not belong
   to the realm of technology.

   ...

   It pertains thus to a rule, by whose schematic application analogous
   problems can be solved, i.e. what in mathematical terminology is
   called an algorithm. Claiming this rule in connection with technical
   features of an apparatus and a processing sequence does not make any
   difference: whether a teaching is of technical nature or not does not
   depend on the linguistic clothing of that teaching but on its material
   content. Therefore the legal complaint's objection that the disputed
   court decision did not strictly adhere to the claim wording is
   mistaken.

   This rule of organisation and calculation, which, according to the
   oral explanations given by the plaintiff before the court, is not by
   itself the object of the patent application, has no technical
   character. How the concept of technology, which the caselaw and the
   literature have always regarded as the decisive criterion for
   distinguishing patentable achievements from non-patentable ones, is to
   be defined in detail, has been most recently explained by this court
   in the Rote Taube (red dove) decision. According to this, a patentable
   invention is a teaching for plan-conformant action utilising
   controllable natural forces for achieving a causally overseeable
   result. It is beyond doubt that a rule of organisation and
   calculation, as described in this patent application, constitutes an
   instruction for plan-conformant action and that the execution of this
   instruction leads to a causally overseeable result. However this
   success (result) is not achieved by use of controllable natural
   forces. It teaches, by which processes of ordering and calculating
   certain problems such as disposition problems can be solved, where
   this solution does not require the use of technical means. A human
   being equipped with the necessary commercial and mathematical
   knowledge can use this rule to reliably solve the disposition problem.

   However human mental activity does not belong to the controllable
   natural forces in the sense explained above. This concept refers only
   to those natural forces which lie outside the activity of the human
   mind and are controlled by man with help of the human mind. Otherwise
   human thinking in its entirety would be subsumed under the concept of
   technology, with the result that this concept would lose its specific
   and distinctive meaning. The fact that the inventor has proposed to
   use technical means for practically executing the rule of organisation
   and calculation and that for this reason he has formulated the rule
   with the peculiarities and capabilities of the computer in mind does
   not change the untechnical character of the rule itself: it is of no
   meaning that in order to put the completed rule to practical use
   technical means can be used or should preferably be used: The rule,
   which by itself constitutes a mental-logical instruction does not
   become technical by the fact that during its application technical
   means -- be that the writing device or the computer of the person who
   applies this rule -- are used. It is not enough that technical means
   are occasionally used for applying an untechnical teaching; the use of
   these technical means must be an integral part of the problem solution
   itself, it must serve to achieve the causally overseeable result, and
   its non-use must inevitably cause the aimed-for success to remain
   unachieved.

   The Federal Patent Court has described the untechnical character of
   the calculation rule by the formulation that for its finding no
   "considerations located in the technical realm" were necessary.
   Thereby it evidently did not mean the subjective mental path which the
   inventors happened to have gone but the mental steps which, according
   to the laws of logic, are objectively required. This reasoning, which
   the plaintiff unjustifiedly accuses of being a "historicist method",
   also leads to the result that the rule of organisation and calculation
   is by itself not technical.

   ...

   The caselaw has characterised the notion of technology by its relation
   to the world of phenomena, contrasting with the world of
   reasoning/mind. According to the Wettschein (betting certificate)
   decision of the Federal Court, a technical invention is present, if an
   instruction is given to use certain technical means for achieving a
   technical result by using technical means. In the Rote Taube (red
   dove) decision, this court generalised this definition so as to
   accomodate other natural forces than those of physics and chemistry,
   e.g. those of biology. However in all cases the plan-conformant
   utilisation of controllable natural forces has been named as an
   essential precondition for asserting the technical character of an
   invention. As shown above, the inclusion of human mental forces as
   such into the realm of the natural forces, on whose utilisation in
   creating an innovation the technical character of that innovation is
   founded, would lead to the consequence that virtually all results of
   human mental activity, as far as they constitute an instruction for
   plan-conformant action and are causally overseeable, would have to be
   attributed a technical meaning. In doing so, we would however de facto
   give up the concept of the technical invention and extend the patent
   system to a vast field of achievements of the human mind whose essence
   and limits can neither be recognized nor overseen.

   ...

   It can furthermore be argued with good reasons that, given the
   unanimity with which the jurisdiction and the legal literature have
   always insisted on limiting the patent system to technical inventions,
   the above reasoning constitutes a theorem of customary patent law.

   Whether we want to postulate such a theorem is however not essential
   for this discussion, because also from a purely objective viewpoint
   the concept of technical character seems to be the only usable
   criterion for delimiting inventions against other human mental
   achievements, for which patent protection is neither intended nor
   suitable. If we gave up this delimitation, there would for example no
   longer be a secure possibility of distinguishing patentable
   achievements from achievements, for which the legislator has provided
   other means of protection, especially copyright protection. The system
   of German industrial property and copyright protection is however
   founded upon the basic assumption that for specific kinds of mental
   achievements different specially adapted protection regulations are in
   force, and that overlappings between these different protection rights
   need to be excluded as far as possible. The patent system is also not
   conceived as a capturing basin, in which all otherwise not legally
   privileged mental achievements should find protection. It was on the
   contrary conceived as a special law for the protection of a delimited
   sphere of mental achievements, namely the technical ones, and it has
   always been understood and applied in this way.

   Any attempt to attain the protection of mental achievements by means
   of extending the limits of the technical invention -- and thereby in
   fact giving up this concept -- leads onto a forbidden path. We must
   therefore insist that a pure rule of organisation and calculation,
   whose sole relation to the realm of technology consists in its
   usability for the normal operation of a known computer, does not
   deserve patent protection. Whether it can be awarded protection under
   some other regime, e.g. copyright or competition law, is outside the
   scope of our discussion.

END Dispositionsprogramm decision

--
Hartmut Pilch                                           http://phm.ffii.org/
Protecting Innovation against Patent Inflation        http://swpat.ffii.org/
80000 signatures against software patents         http://www.noepatents.org/