Thu 21st May 2020

German Federal Court of Justice (BGH) clarifies view of non-technical features in patenting of graphical software user interfaces

A recent decision by the German Federal Court of Justice (BGH) relates to European Patent Convention (EPC) law and provides guidance for software companies seeking to protect an inventive step in a graphical user interface at the European Patent Office (EPO).

In this new decision X ZR 144/17 (“Rotierendes Menü”, Rotating Menu) of 14 January 2020, on the subject of graphical user interfaces the Federal Court of Justice (BGH) confirms:

  • what the skilled person reads implicitly (“between the lines”) as disclosed; and
  • which non-technical features must be disregarded when examining inventive step in the light of patentability exclusions.


The BGH published the following headnote:

The instruction to select a type of display for a selection menu on a screen that only serves the purpose of presenting the menu items displayed and the fact that other items may be available in a particularly clear manner does not concern a means for solving a technical problem and is therefore not to be considered in the examination of inventive step. (Confirmation of BGH decision of February 26, 2015 - X ZR 37/13, GRUR 2015, 660 - Bildstrom; decision of August 25, 2015 - X ZR 110/13, GRUR 2015, 1184 Entsperrbild).


Olaf Ungerer, German and European Patent Attorney in our Munich Office outlines the implications of this recent case for software developers.


Background to this case

The BGH had to decide the question of inventive step of the subject matter of European patent EP 0 888 687 B1 which relates to a TV menu for selecting various menu items arranged along a curved path. The path is only partially shown on a screen and is considered to continue outside the screen, allowing the addition of an unlimited number of menu items.


Fig. 2 of the patent illustrates one form of implementation:



The features of claim 1 were split up by the BGH as follows (English translation):

1. An electronic device comprising

1.1 at least one display and

1.2 a controller.

2. The controller is arranged to cause the display to show a menu.

3. The menu

3.1 rotates,

3.2 comprises a plurality of menu options and

3.3 is disposed off centre in the display,

3.3.1 so that at least one option is rotatable off the display at any one time,

3.3.2 whereby an arbitrary number of options may be added to the menu without changing its format.


Issues that must be disregarded

The BGH stressed that mere presentation or reproduction of information is excluded from patent protection (Art. 52(2)(d) EPC). Therefore, instructions that particularly relate to the transfer of specific content and therefore aim at influencing human imagination and mental activity have to be disregarded as non-technical in the examination of patentability. Moreover, in the examination of inventive step, instructions according to which specific content is emphasized by changes in colour, brightness or the like are to be disregarded.


Considerations in examining for inventive step

Instructions which focus on the transfer of specific content or its transfer in a special appearance cannot be considered when assessing inventive step.

On the other hand, the BGH ruled that instructions by which image contents are presented:

  • in a manner which takes into account physical circumstances of human perception and reception of information; and
  • thereby aim at making at all possible or more appropriate or improving perception of the displayed information by a human being in a specific way; so
  • does serve to solve a technical problem by technical means; and
  • are therefore to be considered during examination on inventive step.


Moreover, a feature directed to reproduction of information is to be considered in the examination of inventive step if and in so far as it concerns a means for achieving a specific technical effect.


According to the BGH, these requirements are met by the features 2, 3.2, 3.3, 3.3.2. They have the function to make use of a spatially limited display area for displaying information that could not be displayed at one time due to its amount and formatting. This technical problem is solved by the spatial arrangement of the displayed information, which is a technical means for solving the problem, namely an appropriate exploitation of the available display area.


However, according to the BGH, the rotating display of the menu, according to feature 3.1, is no more than a mere reproduction of information as such. It does not allow more efficient use of the available display area and only serves the purpose of presenting the displayed menu items and the fact that other items may be available in a particularly vivid manner. This solely addresses human imagination and therefore cannot be regarded as a technical means for solving the problem.


The grounds of the nullity action

The plaintiff who brought the nullity action against the patent cited European patent application EP 0 626 635 as prior art. This prior art document discloses a graphical user interface with only one object wheel, shown in part, for selecting different menu fields:



The decision

Features 1, 1.1, 2, 3.2, 3.3, 3.3.1 were undisputedly judged not novel.


The novelty of feature 3.3.2 (whereby an arbitrary number of options may be added to the menu without changing its format) was in dispute.


The BGH, however, derived from the prior art document directly and unambiguously that partial feature that the menu represented by an object wheel can be expanded by any number of menu items. This is surprising since, as the BGH itself concedes, this feature is not explicitly mentioned in the document. Nevertheless, the BGH saw this feature in the technical information disclosed there so clearly that it is read by the skilled person implicitly (“between the lines”).


On this basis, the BGH considered the claimed partial feature of an absence of changing the format when adding menu items of feature 3.3.2 an obvious measure. How the extension of the menu shown above to the up to 500 menu items mentioned in the document should succeed without changing the format was not explained in the reasoning. However, this argumentation is not completely incomprehensible, especially if only a few menu items are added.


In an auxiliary request to attempt to cure the invalidity, the patent proprietor further claimed the features:

4. The menu is displayed with a perspective,

4.1 in which it appears as in a visible plane that does not extend parallel to the screen,

4.2 where the perspective is achieved by changing either the shape or the size of at least one of the menu items.


However, the BGH did not consider these features to contribute to the solution of a technical problem by technical means.


Reproducing the menu in a certain perspective (feature 4.1) and changing the graphic design of a menu item (feature 4.2) would only concern the graphic representation of the information provided and would result in increased user-friendliness without further technical considerations. These features do not contribute to allowing or improving perception as such or its the practical design of the user interface.


What are the implications?

According to Olaf Ungerer, German and European Patent Attorney in our Munich Office. “The BGH clarifies what needs to be claimed in connection with graphical user interfaces or how this needs to be claimed to contribute to the solution of a technical problem by technical means. What is needed are features that contribute to allowing or improving perception as such or the practical design of the user interface.”


This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in May 2020.



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