SONN Patentanwälte – IP Attorneys

Technicity of a method for mental acts

The decision of the upper regional court of Vienna) dated September 18, 2018, (OLG Wien, 133 R 41/18 d) deals with the technicity exclusively with regard to method claim 1. During the application procedure, claim 1 had been amended by including the limitation that the claimed method is used for the manufacture of a mechatronic product, which the court interprets as “any example of any other product” but not as a limitation as such. Admissibility of the amendment is undisputed. The interpretation of the claim, which in this way goes beyond the exact wording of the claim, contradicts prevailing principles of interpretation. The motive of the applicant for drafting the claims (here: “blurring of arbitrariness”) can only play a role in the interpretation of the claims if it can be derived from the application as originally filed, e.g. if it can be concluded from the description and the drawings (§ 4 section 2 GMG in connection with Article 1 of the Protocol on the Interpretation of Article 69 EPC) that a broader interpretation of the claims than their exact wording is intended. However, there is no legal basis for considering the motive for claim amendments after filing in the interpretation of claims. In a similar way, the method step of manufacturing the product is devaluated to insignificance, albeit for different reasons: The decision only grants this step "formal meaning" as a "mere task" or – as it turns out – no meaning at all. However, it is the nature of required written applications (§ 13 section 1 sentence 1 GMG) that a method can be only be protected as a series of “mere tasks”. If the reasoning of the decision was right, the abstraction prescribed by law would pose a problem for each and every method step. Apart from the questionable reasoning of the decision, the result of the decision is that the claims are also directed to methods that do not comprise the manufacture of a product. Such a broad interpretation cannot be reconciled with the introductory purpose of claim 1 (“Method for producing […]”). Since the reference to a technical application (the manufacture of a mechatronic product) made in claim 1 falls victim to a – as shown – questionable interpretation, there is no opportunity to bring to life the adopted reference to the required solution of a concrete technical problem (emphasis as in the decision) made by the BGH (German Federal Court of Justice, 20 January 2009, X ZB 22/07, Steuerungseinrichtung für Untersuchungsmodalitäten, GRUR 2009, 479). Otherwise, it might have become apparent that a process for manufacturing a technical product solves at least one obvious technical problem: the provision of the technical product in question; a problem that can hardly be solved by purely intellectual activity. The recent decision by the Higher Regional Court of Vienna is commented by our partner Fabian Stanke in this contribution for “Öbl”, edition 3/2019.