Achievement of the function intended by a statement of purpose by external software - SRS assignment (BGH)

Law applied:

EPC Art. 54, Art. 56, Art. 64

Summary:

1. the spatially-physically defined subject-matter of an apparatus claim is protected irrespective of how it has been manufactured and for what purpose it is actually used (connection to BGH GRUR 2006, 923 (925) - Luftabscheider für Milchsammelanlage).

(2) Indications of purpose, effect or function may, as elements of the patent claim, participate in its task of determining and thus at the same time limiting the protected subject-matter, if they define the device element to which they refer as such, which must be designed in such a way that it can perform the relevant function (connection to BGH GRUR 2021, 462 - Fensterflügel).

(3) If, according to the wording of the patent claim, a component of a protected device is to fulfill a specific purpose, it is not sufficient if it can only be made capable of doing so by installing suitable software or other configuration measures. Rather, it must already be configured accordingly, i.e. it must already comprise suitable software or other means which enable the realization of these functions in corresponding operating situations.

Federal Supreme Court, judgment of 11.01.2022 - X ZR 4/20 -, GRUR 2022, 982

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