A Measure to Protect Computer-Implemented Inventions in Europe
Istvan Erdos
PhD Candidate, Department for Private International Law and European Law, Eotvos Lorand University of Sciences
[email protected]
Abstract
This contribution aims to provide an analytical survey on the current Commission legislative proposal for a directive concerning the patentability of computer-implemented inventions in the European Union.[1] The paper presents the legislative approach taken by the Commission, provides a general overview on the Commission proposal and discusses and analyses in depth the most highly debated articles of the Commission proposal.
Keywords :Computer programs, intellectual property, EU legislation, computer implemented inventions, patent law, patentability of computer implemented inventions.
This is a refereed article published on: 15 December 2004.
Citation : Erdos, 'A Measure to Protect Computer-Implemented Inventions in Europe’, 2004 (3) The Journal of Information, Law and Technology (JILT).< http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/2004_3/erdos/>
1. Introduction
No doubt, both the European Patent Office (EPO) and the national patent offices issue patents for computer-implemented inventions applications. In case of infringements national courts have the jurisdiction to enforce these patents [2], and during their procedure the national courts are not bound by the EPO case law.[3] This set-up of powers sometimes leads to situations where the same patent can be found valid in one Member State but not in another. The obvious consequence of this scenario is a huge level of legal uncertainty, which can create barriers to cross-border trade and impede the proper functioning of the internal market.[4] Difference alike would just develop and become greater as Member States adopt new and different administrative practices, or where national case law interpreting the current European legislation evolves differently.[5] Thus, there is a strong need for the harmonization of the different ways in which each Member State deal with computer-implemented invention.[6] The European Union has recognized this setback and made a step forward in order to set up a common understanding of issues relating to computer-implemented inventions.[7] The step taken by the European Union was a proposal for a Directive [8] purposed to harmonize how computer-implemented inventions should be dealt with all across Europe.[9] The present contribution provides a general introduction to the proposed Directive, and an in-depth analysis on the most highly debated issues.[10]
2. The Legislature Approach Taken by the Community
By proposing this Directive the Commission intends to create a harmonized framework for the protection for computer implemented-inventions in the European Union without causing any sudden change in the legal position, and in particular any extension of patentability to computer programs ‘as such’. The underlying aim of the proposed Directive is to secure legal certainty [11] and uniform interpretation and application of the law by national courts.[12] In practical terms it means that besides providing statutory patent protection for computer programs, the present legal situation – which excludes computer programs as such from the patentable subject matters - should not be changed. The approach taken by the Community drafters was not a new one, since they followed the EPO course, in particular the principle that an invention to be patentable must make a technical contribution [13] to the state of the art. If the proposed Directive adopted, this technical contribution requirement evolved through the EPO case law will not be overcome. By codifying the technical contribution requirement the supposed patent protection provided for computer-implemented inventions shall not extend to other areas of traditionally excluded subject matters [14], such as pure business methods.[15]
3. Overview of the Main Provisions of the Proposed Directive [16]
The draft Directive comprises of nineteen recitals and eleven articles. As to the substantive law and the subject of the present paper the first seven articles bear legal relevance.[17] Article 1 sets the scope of the Directive according to which the Directive lays down rules for the patentability of compute-implemented inventions. The term ‘computer-implemented invention’ is defined in Article 2. Article 2 defines certain, so-called key concepts (computer-implemented invention, technical contribution) applied in the Directive. Under art. 2 (a) ‘computer-implemented invention’ means any invention the performance of which involves the use of a computer, prima facie novel computer network or other programmable apparatus and having one or more features which are realized wholly or partly by means of a computer program or computer programs. This definition mirrors the concept developed in the EPO case law [18]. However, the European Parliament in its amendments set the expression ‘prima facie novel’ aside by arguing that it would create a certain level of lack of clarity and could add an additional requirement to assess novelty at the commencement of the examination procedure.[19] The outcome of this approach is that the novelty feature of any invention does not need to reside in a technical feature. It is not necessary to establish actual novelty in order to determine whether an invention falls within the definition of computer-implemented invention.
If adopted, the effect of the abolishment of the prerequisite that the novel feature has to be found in the claimed computer-implemented invention can result in a situation where, for example, a computer apparatus possesses the novelty feature.Article 2 (b) provides that the notion ‘technical contribution’ means a contribution to the state of the art in a technical field which is not obvious to a person skilled in the art.[20] The presence of technical contribution has to be assessed under the inventive step requirement.[21]
Originally the Commission inserted Article 3 in the proposal to ensure that a computer-implemented invention belongs to a field of technology.[22] The underlying rationale of this proposed article can be found in the context of Recital 6 [23] and Art. 27 (1) of the TRIPs Agreement [24]. Under these provisions patents shall be available for any inventions in all fields of technology providing that they comply with the patentability requirements. According to the Commission’s viewpoint it was necessary to declare that a computer-implemented invention belongs to a field of technology in order to make sure that for instance an algorithm which is defined without reference to a physical environment does not meet the definition of ‘computer-implemented invention’ and does not fall within a field of technology. The Parliament ignored this article by stating that this proposed article is unnecessary and unclear in scope. Furthermore, as they said, it would be very difficult to put this provision into effect and its application might lead to some unpredictable results and additionally to the extension of the scope of the patent protection.[25]
Article 4 sets up the requirements of patentability.[26] In order to be patentable, a computer-implemented invention must be susceptible of industrial application and new and involve an inventive step .[27] [28] In order to involve an inventive step, a computer-implemented invention must make a technical contribution .[29] Simultaneously, a computer-implemented invention making a technical contribution constitutes a necessary condition of involving an inventive step.[30]
In the light of the European approach expressed in the proposal the requirement of technical contribution is to be considered as a kind of qualification of the inventive step as it is in Art. 56 of EPC [31], and not a substitute for that.[32] The elements to be taken into consideration in the assessment of the existence of the necessary technical contribution are the state of the art and the scope of the patent claim . These elements must be considered as a whole, and must comprise technical features, irrespective of whether or not such features are accompanied by non-technical features.
The Commission’s approach – that computer-implemented invention it must be assessed as a whole for the purpose of the examination of the technical contribution requirement [33] – is consistent with the EPO Technical Board of Appeal case law.[34] According to EPO case law there must be no room for any assessment of weighting between technical and non-technical features in determining which of the two aspects makes more important contribution to the invention success. On the basis of these rules an invention having a non-obvious technical contribution may still merits to be patentable. Although in the case where no technical contribution is present [35], the invention falls within the category of excluded subject matters.[36] If a valid claim contained both technical and non-technical aspects, there is no possibility to monopolize the sole non-technical features in isolation from the technical features. When assessing whether an inventive step is involved (and so technical contribution), the examiners turn to the application of the so-called problem-solution approach.[37] Technical contribution can arise from the underlying problem solved by the claimed invention, the effects achieved in the solution of the underlying problem, the need for technical considerations to arrive at the computer-implemented invention as claimed, and from the means constituting the solution of the underlying problem.[38] In order to make sure the exclusion of pure software and business methods from the circle of patentable subject matters, a few weeks after the Parliament had issued its Report, some additional proposals were introduced.[39] An additional test was proposed for patentability, according to which an invention must teach a new way to use ‘controllable forces of nature’[40] and have an ‘industrial application’.
A simple specification of a technical mean does not amount to meet the requirement of patentability. As argued above, a technical contribution is needed. In order to exclude any possible misunderstanding of this issue the Parliament proposed an additional article, article 4 (a) titled ‘Exclusions from patentability’.[41] Furthermore, by way of the interpolation of this new article, the EP makes clear its intention that computer-implementation of a business method shall not qualify as patentable invention.[42]
The drafters had and still have to face a very intensive load of criticism coming from all over Europe. Some of those relate to the issue of claim formulation. According to Article 5 [43] of the Commission¢s proposal [44] – which leaves the path levelled by the practice of the EPO – computer-implemented inventions can be claimed either as a product claim [45] or as a process claim [46]. According to the wording of the Proposal, a computer program on its own or on a carrier can be available for patent protection, if the program when it runs on an apparatus carries out a process or implement a product, which qualifies for patent protection under the articles of the directive.[47]
However, if the contribution to the state of the art relates solely to an unpatentable subject matter - irrespective of the claim formulation [48]- there can be no patentable invention.[49] The most heavily attacked provisions of the Proposal are the ones dealing with the relationship between the scope of the patent protection and the exemptions provided by copyright protection under the provisions of the Directive 91/250/EEC on the legal protection of computer programs by copyright.[50] Here the problem was that unlimited patent protection would make acts initially permitted under the existing copyright legislation allowing reverse engineering in order to achieve interoperability illegal.
It was necessary to ensure that the same acts to achieve interoperability are allowed both under copyright law and patent law. Article 6 of the proposed Directive [51] is to settle this dilemma. According to this article the rights conferred by patents shall not affect the acts permitted under Article 5 and 6 of the Directive 91/250/EEC, in particular in respect of decompilation and interoperability.[52] In particular acts which under Articles 5 and 6 of Directive 91/250/EEC do not require authorization of the rightholder with respect to the rightholder's copyrights in or pertaining to a computer program, and which, but for Articles 5 or 6 of Directive 91/250/EEC, would require such authorization, shall not require authorization of the rightholder with respect to the rightholder's patent rights in or pertaining to the computer program.[53] It seems to be a fair solution for the problem, but this would create an uncertain legal situation in the sense that the exemptions under traditional patent law are broader than the ones allowed under Art 5 and 6 of Directive 91/250/EEC.
For example, experimental use and research exemptions – as fair use exemptions - are usual exemptions provided under patent law, but under the current legal regime the practice of these acts might amount to copyright infringement. Furthermore, the Parliament proposed a new article to ensure interoperability in case of networks. According to this new proposal, wherever the use of a patented technique is needed for the sole purpose of ensuring conversion of the conventions used in two different computer systems or network so as to allow communication and exchange of data content between them, such use is not considered to be a patent infringement.[54]
The aim of this provision is - by allowing acts in order to achieve interoperability - to ensure the development of open networks and avoiding abuse of dominant position.[55] The scope of permissible acts is broader then the specific activities allowed under Directive 91/250/EEC, because the copyright directive refers only to computer programs and not to computer systems or networks, like the proposal does.[56] The reason why the drafters put this provision into the proposal was a very obvious one. Whereas patent rights should not be used in an anti-competitive manner [57], software companies always want to control data exchange standards in order to deny competitors access to the market, which is an anti-competitive behaviour.
However, as it turned out for example in the Microsoft case [58], it is extremely difficult to handle these situations on a case-by-case basis, so there is a need that patent law should deal with this competition law considerations.[59] The Commission has to monitor and to report if there is any difficulty in respect of the coexistence of the protections provided by patents and by copyright and whether any abuse of the patent system has occurred in relation to computer-implemented inventions.[60] As to the effect that the patent protection for computer-implemented inventions may have on competition, it is the Commission’s obligation to monitor [61] and to prepare a Report for the European Parliament and the Council.[62] Furthermore, the Commission also has to monitor the impact of patents granted for computer-implemented invention on SMEs and electronic commerce.[63] The last four articles contain administrative provisions in respect of the implementation of the proposed Directive.[64]
4. Conclusion
The question of patentability of computer-implemented invention is becoming steadily more and more important in the light of the fact that such inventions are estimated to cover 15% of new patent applications in Europe. The patentability of computer-implemented inventions is already accepted in the EPO practice. In September 2003 the European Parliament adopted the proposal [65] with certain amendments, concerning mainly the issues of interoperability, claim formulation, etc. According to the European Parliament’s findings these amendments were necessary in order to ensure that patents will not be used to block competing innovations.[66] The amended proposal passed back to the Commission [67], and the Commission had to decide on whether the amendments proposed by the European Parliament were acceptable or not. The answer was pretty much predictable. As the speaker on behalf of the Commission during the EP debate expressed: ‘…many of these amendments are fundamental…There are some interesting points, but in the main, I am afraid that the majority of those amendments will be unacceptable to the Commission.’[68] In May this year the Competitiveness Council reached a political agreement on a common position on the proposal. The Commission supports the text adopted by the Council, however, this text is still not in fully compliance with the position of the EP. The EP was to introduce a wider system for exclusions covering the use of patented inventions for the purpose of interoperability and data handling. Both the Commission and the Council found this initiative as a possible harm to EU competitiveness – since it went so beyond the level what can be required to reach a healthy balance between rewarding the inventors and allowing competitors to build on the inventions. The common position went back to the EP for a second reading, which takes place after the EP has reconvened in September 2004.[69] Since there are many controversial issues in respect of the patentability of computer-implemented inventions in Europe there is a strong need for a clear and coherent legal regime. This aim could be achieved by the adoption of the proposal. As it seems, there is still a long way to go until the final adoption of the Directive, but the significance of the steps taken by the European Parliament by having a debate and adopting the proposal with amendments and by the Council by adopting the common position is indubitable. It shows up a light at the end of the tunnel. Meanwhile the debate continues, and not only within the European Institutions but also at the level of different interest groups as well.[70]
Notes and References
[1] Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions (COM/2002/0092 final - COD 2002/0047) OJ C 151 E , 25/06/2002 P. 0129 – 0131.
[2] For an overview on the structure and functioning of the European patent system, see for example, TRITTON (2002) p78, BERESFORD (2000) p22, SINGER-STAUDER: (2003) .
[3] Even the UK tend to follow the the European Patent Convention (EPC) rules developed by the EPO. See: BERESFORD (2000) p22.
[4] See: Recital 2 of the Commission Proposal
[5] See: Recital 3 of the Commission Proposal
[6] However, as Booton and Mole (2002) pointed out, the main divergence of approach to the patentability of computer-implemented inventions amongst Member States arises from the application of the relevant statutory provisions, rather than from the provisions themselves. However, it is hard to argue that there has been a significant divergence of approach since the coming force of the EPC. Only two EU member state, Germany and the U.K. have developed a body of jurisprudence regarding to computer-implemented inventions. Although the approaches of these two countries had been traditionally quite different after the EPC and the corresponding amendments of national laws a significant convergence took place in this regard. See: BOOTON – MOLE (2002) p296.
[7] See: Amendment 2 Recital 5 reads ‘…the legal rules governing the patentability of computer-implemented inventions should be harmonized so as to ensure that the resulting legal certainty and the level of requirements demanded for patentability enable innovative enterprises to derive the maximum advantage from their inventive process and provide an incentive for investment and innovation.’
[8] The Commission decided to regulate this area by means of a directive because directives are the main means of harmonization of laws and regulations in the European Union. A directive is binding as to the result to be achieved (within the implementation period) upon each Member State to which it is addressed, but leaves to the national authorities the choice of form and methods. see : Art. 249 EC Treaty
[9] The other reason for a Community action was the desire that the Commission wanted to avoid American alike situation where case law allows authorities to issue patents for computer-related inventions too easy, in particular for algorithms or business-methods. (Should one be interested in the U.S. case law on computer-related inventions, please read, for example: ATTRIDGE (2001) p22. For a review of the U.S. practice regarding computer-related inventions, read U.S.P.T.O. Manual of Patent Examining Procedure available at < http://www.uspto.gov/web/offices/pac/mpep/> (21/09/2003).)
[10] There have also been some concerns whether the proposed Directive is a Community hidden attempt to circumvent or amend the relevant restrictive provisions of the EPC. As to these fears, the EPC is an international agreement, which according to the relevant rules of public international law (See: Part IV. of the Vienna Convention on the Law of Treaties) could be amended only by the consensus of the contracting countries. Moreover, the EPC is ‘not an agreement concluded by the Community’ (See: Opinion of Mr. Advocate General Jacobs, 14 June 2001, Case C-377/98 E.C.R. 2001 page I-07079 point 163.), so the amendment cannot be an issue at hand.
Furthermore, Amendment 3 proposed by the Parliament makes the legislative purpose very clear by stating ‘The aim of this Directive is not to amend the European Patent Convention, but to prevent different interpretations of its provisions’. However, as to the amendment of the relevant provisions of the EPC, it is important to note that in November 2000 a Diplomatic Conference was organized with the purpose to undertake the modernization of the EPC. A specific proposal from the Committee on Patent Law and the EPO Administrative Council was put on the table advocating the abolition of programs for computers from Article 52 (2) (c) of the EPC, in the light of the EPO practice (see e.g. Decisions T 84/0284, T 97/0935, T97/1173).
The conference dismissed the proposal by saying that ‘the matter had not yet been sufficiently thought through for this to be the right time to make a binding decision’. (See: BOOTON – MOLE (2002) p293) Should someone have more interest in the subject, the following literature provides a good background: BASINSKI (2000) p1, Revision of the European Patent Convention: Background and outline proposals at < http://european-patent-office.org/epo/dipl_conf/background.htm> (26/08/2003), European Patents: Amendments to the European Patent Convention at < http://www.newburnellis.co.uk/epcamtxt.htm> (26/08/2003)) However, the question whether the lawfulness of the Directive (if adopted) will be questionable on the basis that it contains provisions contrary to international obligations of the member states is a more interesting one (supposing, that the provisions of the Directive are contrary to the relevant provisions of the EPC). A similiar question has already been analysed by the European Court of Justice (ECJ) in regard to the lawfulness of the 98/44/EC Directive (on the legal protection of biotechnological inventions). (see: Case C-377/98 Kingdom of the Netherlands v European Parliament and Council of the European Union E.C.R. 2001 page I-07079). The ECJ declared in the case, that ‘…the lawfulness of a Community instrument [i.e. a directive] does not depend on its conformity with an international agreement to which the Community is not a party, such as the Munich Convention on the Grant of European Patents…’ Furthermore, ‘Nor can its [a Community instrument] lawfulness be assessed in the light of instruments of international law, which like the Agreement establishing the World Trade Organization and the Agreement on Trade-related Aspects of Intellectual property Rights (TRIPs) … are not in principle , having regard to their nature and structure, among the rules in the light of which the Court is to review the lawfulness of measures adopted by the Community institutions ’. (point 5.) The ECJ, in regard whether a Community instrument such as a directive can be used as a mean to establish common interpretation of provision of international treaties (i.e. EPC) all across the member states, found ‘…The purpose of harmonization is to reduce the obstacles, whatever their origin, to the operation of the internal market which differences between the situations in the Member States represent. If divergences are the result of an interpretation which is contrary, or may prove contrary, to the terms of international legal instruments to which the Member States are parties, there is nothing in principle to prevent recourse to adoption of a Directive as a means of ensuring a uniform interpretation of such terms by the Member States.’ (point 20) moreover, ‘…it does not appear [ in the present case] that such an approach is inconsistent with the Member States' honouring their obligations under the EPC or is unsuitable for achieving the objective of creating uniform conditions for the patentability of biotechnological inventions.’ (point 21).
As to the legal basis of the Directive in question the ECJ explained by referring to the Opinion 1/94 of 15 November 1994 ([1994] ECR I-5267), that ‘…the Community is competent, in the field of intellectual property, to harmonize national laws pursuant to Article 100 of the EC Treaty (now Article 94 EC) and Article 100a of the Treaty and may use Article 235 of the EC Treaty (now Article 308 EC) as the basis for creating new rights superimposed on national rights’ (see: point 24 – 29). (see also SCHIUMA (2000) p36).
[11] Legal certainty will also be secured by the fact that, in case of doubt as to the interpretation of this Directive, national courts may and national courts of last instance must seek a ruling from the Court of Justice. (see: Amendment 2 Recital 5 second paragraph).
[12] See: Justification given to Amendment 2.
[13] Controlling pension benefits system/PBS T-0931/1995 decision dated 8.09.2000. In the case the claim was directed to a method for controlling a pension benefits program by administering at least one subscriber employer account. The Technical Board of Appeal expressed the view that all of the features of the claimed subject matter were steps of processing, and of pure administrative nature. Based on this observation the Technical Board of Appeal asserted that the invention was a simply method of doing business, having no technical character at all. Furthermore, the Board affirmed that business methods can constitute patentable subject matter under the EPC but only in the case if the claimed invention has a technical character which goes beyond the mere fact that a computer apparatus is used to implement it. (For an in-depth analysis on this case, see: LAAKKONEN – WHAITE (2001) p244).
[14] See: Amendment 6 (Recital 13a (new)) proposes, that ‘ the mere implementation of an otherwise unpatentable method on an apparatus such as a computer is not in itself sufficient to warrant a finding that a technical contribution is present . Accordingly, a computer-implemented business method or other method in which the only contribution to the state of the art is non-technical cannot constitute a patentable invention.’ Amendment 8 (Recital 13c (new)) declares, that ‘ an algorithm is inherently non-technical and therefore cannot constitute a technical invention. Nonetheless, a method involving the use of an algorithm might be patentable provided that the method is used to solve a technical problem. However, any patent granted for such a method would not monopolize the algorithm itself or its use in contexts not foreseen in the patent.’ Amendment 10 (Recital 14) reaffirms, that the aim of the Directive is to clarify ‘ the present legal position having regard to the practices of the European Patent Office … and avoiding any drift towards the patentability of unpatentable methods, such as business methods.’
[15] Permitting the issue of patents for computer-implemented inventions but keeping business methods as non-patentable subject matter is not really a step forward. The Directive should make clear that claims to computer related inventions, which may encompass a ‘business method’ or produce a ‘business’ result shall not necessarily be considered a ‘business method as such.’ Such claims would be those specifying computers, computer networks or other conventional programmable apparatus for carrying out at least some of the steps of the business method. These claims must be first evaluated for the technical character of the invention as a whole, as well as for its novelty and inventive step. This could provide the EU with the legal certainty as well as the ‘level playing field’ on which to compete with US and Japanese businesses in the growing Internet and rapidly developing e-business processes and collaborations. See: Basinski (2002)
[16] This section is based on the Commission Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions Brussels, 20.02.2002, COM (2002) 92 final (2002/0047 (COD)) and on the Report on the proposal for a directive of the European Parliament and of the Council on the patentability of computer-implemented inventions (COM(2002) 92 – C50082/2002 – 2002/0047 (COD)), 18 June 2003. Should someone be interested, the Commission on Intellectual Property (Department of Policy and Business Practices at the International Chamber of Commerce) published a document titled ‘ Comments on the draft EC Directive on the Patentability of Computer Related Inventions ’ (Document n° 450/953 Rev., 12 September 2002) addressing both general and special aspects of the proposal. The document is available at <http://www.iccwbo.org/home/statements_rules/statements/2002/ec_directive_patentability.asp> (14/07/2003).
[17] According to the Commission Proposal : Article 1 Scope; Article 2 Definitions; Article 3 Computer-implemented inventions as a field of technology; Article 4 Conditions of patentability; Article 5 Forms of claims; Article 6 Relationship with Directive 91/250 EC on the legal protection of computer programs by copyright; Article 7 Monitoring; Article 8 Report on the effects of the Directive; Article 9 Implementation; Article 10 Entry in force; Article 11 Addressees. Parliament Report : Article 1 Scope; Article 2 Definitions; Article 3 – deleted -; Article 4 Conditions of patentability; Article 4a: Exclusions from patentability ; Article 5 Forms of claims; Article 6 Relationship with Directive 91/250 EC on the legal protection of computer programs by copyright; Article 6a – interoperability -; Article 7 Monitoring; Article 8 Report on the effects of the Directive; Article 8a ; Article 9 Implementation; Article 10 Entry in force; Article 11 Addressees.
[18] In Europe the term ‘computer-implemented invention’ was introduced by the document titled ‘EPO 2000/05/19:Examination of ‘business method’ applications’ (See: <http://www.european-patent-office.org/tws/appendix6.pdf> (23/09/2003) - this document is an Appendix attached to report based on the trilateral cooperation among the three ‘big’ patent offices, such as the USPTO, the EPO and the Japanese Patent Office (JPO)). According to this document, the expression ‘computer-implemented inventions’ is intended to cover claims which specify computers, computer networks or other conventional programmable digital apparatus whereby prima facie the novel features of the claimed invention are realized by means of a new program or programs. Such claims may take the form of a method of operating said conventional apparatus, the apparatus set up to execute the method (loaded with the program), or following T1173/97 the program itself. Insofar as the scheme for examination is concerned, no distinctions are made on the basis of the overall purpose of the invention, i.e. whether it is intended to fill a business niche, to provide some new entertainment, etc.. (The restatement of this explanation of the notion of computer-implemented inventions can be found in the EPO Guidelines for Examination Part C Chapter IV 2. under title ‘Programs for computers’) As far as the practice of other big patent offices is concerned, see in the U.S.: USPTO Examination Guidelines for Computer-Related Inventions saying that ‘computer-related inventions cover inventions implemented in a computer and inventions employing computer readable media.’
(see: <http://www.uspto.gov/web/offices/com/hearings/software/analysis/files/guides.doc> footnote 2, (24/08/2003)), in JAPAN, the Draft of the Revised Examination Guidelines for Computer Software Related Invention does not define this concept, only talks about ‘applications relating to computer software related inventions (later referred to as ‘software related inventions’) whereas software means ‘a program relating to the operation of a computer’ provided, that a program is ‘a sequence of instructions suitable for a computer to perform a particular processing.’ (See:<http://www.jpo.go.jp/iken_e/pdf/feedback_121102_2.pdf> (25/09/2003) p 4).
[19] See: Justification given for Amendment 14.
[20] This definition mirrors the concept developed by the EPO Technical Board of Appeal.
[21] See: Recital 11, Article 4.
[22] Article 3 of the Proposal Computer-implemented inventions as a field of technologyMember States shall ensure that a computer-implemented invention is considered to belong to a field of technology.
[23] Recital 6 of the Proposal: The Community and its Member States are bound by the Agreement on trade-related aspects of intellectual property rights (TRIPs), approved by Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994). Article 27(1) of TRIPs provides that patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. Moreover, according to TRIPs, patent rights should be available and patent rights enjoyable without discrimination as to the field of technology. These principles should accordingly apply to computer-implemented inventions.
[24] Article 27 of TRIPs Patentable Subject Matter 1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology , provided that they are new, involve an inventive step and are capable of industrial application. (5) Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
[25] Furthermore, to clarify the case, the Parliament proposed, that ‘even though a computer-implemented invention belongs by virtue of its very nature to a field of technology, it is important to make it clear that where an invention does not make a technical contribution to the state of the art, as would be the case, for example, where its specific contribution lacks a technical character, the invention will lack an inventive step and thus will not be patentable.’ (See: Amendment 5).
[26] See also: Recital 11 of the amended proposal.
[27] Art 4 (1) of the Proposal, first sentence (with the amendments proposed by the Parliament).
[28] These requirements are identical to the ones laid down in Article 52 (1) EPC.
[29] Art 4 (1) of the Proposal, second sentence (with the amendments proposed by the Parliament).
[30] Art 4 (2) of the Proposal (with the amendments proposed by the Parliament).
[31] EPC Article 56 Inventive step. An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents are not to be considered in deciding whether there has been an inventive step.
[32] Of course, this is the general requirement for all patentable inventions, although in the fields which generally lack excluded subject matters there is no need to consider whether a contribution to the state of the art is technical or not. Under the European legal regime a computer-implemented invention in which the contribution to the state of the art does not have a technical character – even if the contribution to the prior art is not obvious – cannot be considered as one complying with the inventive step requirement.
[33] See also Recital 13(a) invented by the Parliament and the supporting Justification.
[34] See cases: Controlling pension benefits system/PBS T-0931/1995 decision dated 8.09.2000, Koch & Sterzel T26/86 (21.5.87) [1988] OJEPO 19.
[35] For instance if the contribution to the state of the art has purely non-technical aspects, like in the case of a method of doing business.
[36] See also Recital 12 of the amended proposal.
[37] The ‘problem-solution’ approach consists of the following steps: a., identifying the ‘closest prior art’ b., assessing the technical results (or effects) achieved by the claimed invention when compared with the ‘closest prior art’ established c., defining the technical problem to be solved as the object of the invention to achieve these resultsd., examining whether or not a skilled person, having regard to the state of the art in the sense of Art. 54 (2), would have suggested the claimed technical features for obtaining the results achieved by the claimed invention. See more on the ‘problem-solution’ approach: PATTERSON (1992) p424, SINGER-STAUDER (2003) pp150 - 156, VIETZKE (1993) p25.
In ALCAN/Aluminum alloys ((T-465/92) ALCAN/Aluminum alloys [1995] E.P.O.R. 501.) the Technical Board of Appeal expressed that the weakness of the problem-solution approach is that it relies on the results of a search of the relevant prior art, which is made with actual knowledge of the invention and is thus inherently based on hindsight, and thus requires care in its application. Furthermore, this approach can result in a complicated multi-step reasoning where the facts are clear, either for or against inventiveness. (for more comments on this case see: GTRITTON (2002) p94. On the issue of ‘could-would’ approach see: SINGER-STAUDER (2003) p155.
[38] Some instances where a ‘technical contribution’ has been found: - controlling an X-ray apparatus by a data processing unit in a way which provided an optimum balance between potentially conflicting operational requirements- reaching an increase in processing speed in a computer by a new and non-obvious method- in case of an invention where the communication between independent systems involved a stage of activities requiring the use of technical skills (beyond those expected of a computer programmer) to be carried out before the start of the actual programming.
[39] See: Software Patents: A clicking bomb in The Economist September 4 th 2003 (at <http:/www.economist.com/business>).
[40] The concept of using the test of whether the claim teaches a new way of using controllable forces of nature is not a new one. The Austrian Patent Office in 1968 held, that ‘a technical invention…exists only if natural forces have been made directly useful for human requirements by influencing the physical things of the outside world. (BERESFORD (2000) p9, FRANZOSI (2003) p235). In 1970 the Swiss Patent Office rejected a patent application relating to a computer program for calculating the reinforcement required for building blocks made of concrete. In the decision the SPO argued, that ‘in principle, it is generally acknowledged that patent law pertains exclusively to the area of technology and that patent protection is applicable only to the extent that natural forces in the broadest interpretation of that term, are used to achieve a technical effect.’ (See BERESFORD (2000) p11). In Germany, in Walzsabteilung the senate explained, that the concept of technical invention means that a technical invention is the plan-conformant use of controllable natural forces outside the realm of human reasoning for directly achieving a casually overseeable success. (See: Rolling Rod Splitting (Walzstabteilung) Decision available at <http://swpat.ffii.org/papers/bgh-walzst80/> (18/09/2003)). In 1976 Krasser pointed out, that the invention concept of the EPC is based on the concept of ‘technical teaching’, and defined the ‘invention’ as technical teaching, for example, instructions on how to use natural (physical, material) forces to directly cause a physical/material effect (See: Bernhardt – Kraße (1986)). Furthermore, according to another proposal, the Directive should define the ‘invention’ as ‘solution of a problem by use of controllable forces of nature’. The use of this definition would clarify the real meaning of the concept of invention. Moreover, the term ‘controllable forces of nature’ clearly excludes the inherently non-technical algorithms and business methods. (See: EU Software Patent Directive Core Amendments 2009-09-12, p7).
[41] Article 4a [Exclusions from patentability] a computer-implemented invention shall not be regarded as making a technical contribution merely because it involves the use of a computer, network or other programmable apparatus. Accordingly, inventions involving computer programs implementing business, mathematical or other methods and do not produce any technical effects beyond the normal physical interactions between a program and the computer, network or other programmable apparatus in which it is run shall not be patentable.
[42] An interesting document ‘U.S. Comments on the Draft European Parliament Amendments to the Proposed European Union Directive on the Patentability of Computer-implemented Inventions’ can be found at <http://swpat/ffii.org/papers/eubsa-swpat0202/ustr0309> (18/09/2003). In the document the ‘Mission of the United States of America to the European Mission’ expressed its opinions on the Draft Directive (they focus on three main issues: Article 4, Article 6 and Article 6a of the Proposal).
[43] See also Recital 13 d (new) of the Proposal (as amended by the Parliament).[44] Article 5 of the Proposal Form of claims
Member States shall ensure that a computer-implemented invention may be claimed as a product, that is as a programmed computer, a programmed computer network or other programmed apparatus, or as a process carried out by such a computer, computer network or apparatus through the execution of software.
[45] i.e. a programmed computer, a programmed computer network or other similar apparatus.
[46] i.e. a process carried out by such an apparatus through the execution of a software
.[47] Article 5 (2). A claim to a computer program, on its own, on a carrier or as a signal, shall be allowable only if such program would, when loaded or run on a computer, computer network or other programmable apparatus, implement a product or carry out a process patentable under Articles 4 and 4a
[48] For example if the claim specify technical means just in order to circumvent the technical contribution requirement.
[50] Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs OJ. L122 1991 p.42 –46.
[51] Article 6 The rights conferred by patents granted for inventions within the scope of this Directive shall not affect acts permitted under Articles 5 and 6 of Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular under the provisions thereof in respect of decompilation and interoperability.
[52] For a literature on Article 5 and 6 of Directive 91/250/EEC, see e.g. MEIJBOOM (1993) p12, (for more, see: Bibliography).
[53] See: Recital 18 of the amended proposal. During the preparatory works of the Parliament Report, there have been many proposals to clarify this rule. Professor Marco Ricolfi suggested a more precise version when proposed the following wording: ‘Without prejudice to provisions concerning experimental use and research exemption contained in Member States patent laws, Acts permitted as exemptions under Articles 5 and 6 of Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular thereof relating to decompilation and interoperability, shall be neither affected through the protection granted by patents for inventions within the scope of this Directive nor restricted by it.’ The antecedent of this amendment proposed, that ‘the corresponding fair use provisions should be introduced into the patent laws of the member States’.
[54] See: Amendment 20, Article 6 a (new).
[55] The ECJ held in several judgments that interoperability is a mean to ensure the development of open networks and the avoidance of abuse of dominant position, see for example C-79/00 Telefónica de Espańa SA v Administración General del Estado E.C.R. 2001 p. I-10075 (Interoperability is to ensure the operation of an open and competitive market), C-271/94 European Parliament v Council of the European Union E.C.R. 1996 p. I-01689 (Importance to ensure the interoperability of networks).
[56] In communication referred at note 42 the U.S. Government expressed its opinion that this provision would ‘permit infringement of patented inventions with significant commercial value based solely on some undefined ‘need’ to ‘exchange data’. Virtually all computers exchange or are callable of exchanging data with other computers, and many may require for some ‘conversion of convention’ for communication. Thus, many data exchange methods would appear to fall under this exception’.
[58] United States v. Microsoft, 231 F. Supp. 2d 144, 202-03 (D.D.C. 2002), see also the EU Competition case(s) against Microsoft (as a result of investigation against Microsoft in August 2003 the European Commission found that Microsoft abused its dominant position in respect of its Windows Media Player and its low-end servers. (See: e.g. <http://www.hostingtech.com/news/2003/8/7/>) For literature on this, read WEISER (2003) p 560, MACLUCKIE (2001/2002) p415, REID (2001) p77. For an interesting article on another EU software antitrust case, see BADAL – WARE (2003?).
[59] ibid, and see also <http://swpat.ff.ii.org/papers/eubsa-swpat0202/ustr0309/> (18/09/03).
[60] See: Amendment 23 Article 8 (d) new.
[61] Article 7. The Commission shall monitor the impact of patent protection for computer-implemented inventions on innovation and competition, both within Europe and internationally, and on European businesses, especially small and medium-sized enterprises, and electronic commerce.
[62] See: Article 8 (a).
[63] For studies on the relationship between software patents and electronic commerce, see for example: Olsson (2000) p262, Chu (2002) p166, LEE (1998).
[64] It is worth noting, that under Article 8 (f) (new) the Commission has the obligation to monitor and to report that in what respects it might be necessary to prepare a diplomatic conference to revise the European Patent Convention, also in the light of the advent of the Community patent.
[65] The debate took place on European Parliament plenary meeting of September 23 2003, and the voting was held on the 24 th of September 2003. (364 votes in favour, 153 against, 33 abstentions).
[67] It is a co-decision procedure. If the Commission approves the amendments, the proposal returns to the European Parliament. At last, the EU ministers will vote on the final version of the proposal. For the monitor of the decision making process see: <http://europa.eu.int/prelex/detail_dossier_real.cfm?CL=en&DosId=172020> .
[68] See: Verbatim Report of Proceedings (sitting of Tuesdays 23 September 2003), p. 8, available at <http://www3.europarl.eu.int/omk/omnsapir.so/calendar?APP=PDF&FILE=20030923i.pdf&TYPE=CRE> (24/09/2003) For the speech on the amendments explaining which of them the Commission can accept, see: Ibid, pp 22-23.
[69] See: Press release IP/04/659 Brussels, 18 th May 2004.
[70] S ee, for example, Protecting Innovation against Patent Inflation (available at <http://swpat.ffii.org>), ‘270,000 votes 2000 firms against software patents’ (available at <http://noepatents.org>), or email lists such as <[email protected]>.
Books
BERESFORD K (2000) Patenting Software under the European Patent Convention (London: Sweet & Maxwell)
MERGES R P – MENELL P S – LEMLEY M A (2002) Intellectual Property in the New Technological Age (New York: Aspen Law & Business)
PATTERSON G (1992): The European Patent System (London: Sweet & Maxwell)
SINGER-STAUDER (2003) The European Patent Convention - A Commentary (Munich: Thomson Sweet & Maxwell, Heymanns)
TRITTON G (2002) Intellectual Property in Europe 2 nd edition (London: Sweet & Maxwell)
Articles (Papers, Online), Reviews
ATTRIDGE D (2001) ’Challenging Claims! Patenting Computer Programs in Europe and in the USA’, I.P.Q. 2001
ATTRIDGE D J M (2000) ’Copyright Protection for Computer Programs’, EIPR 2000 BASINSKI E J (2000) ‘The Diplomatic Conference to Revise the Articles of the European Patent Office Votes to Maintain the Status Quo Regarding Software Patents in Europe Pending Issuance of a New Software Patent Directive by the European Union’, International Journal of Communication Law and Policy 2000/2001
BADAL R G – WARE H E (2003?)’U.S. Company Compelled To License Its Software by E.U. Antitrust Authorities: The Case of NDC Health v. IMS Health’, available at <http://www.hewm.com/use/articles/imshealth.pdf> (11/06/2003) Bernhardt – Kraße (1986) ‘Lehrbuch des Patentrechts -- Recht der Bundesrepublik Deutschland, Europäisches und Internationales Patentrecht’ available at <http://swpat.ffii.org/papers/krasser86/index.de.html> (18/09/2003)
Basinski E J (2002) ‘ Comments of Erwin J. Basinski, Esq. regarding the patentability of computer-implemented inventions’, available at: <http://www.patent.gov.uk/about/consultations/responses/comsoft/atof/basinski.htm> (16/07/2003)
BOBCKO P K (2001) ’Open-Source Software and the Demise of Copyright’, Rutgers Computer and Technology Law Journal 27
BOOTON D – MOLE P (2002) ’The Action Freezes? The Draft Directive on the Patentability of Computer-implemented Inventions’, I.P.Q. 2002
Chu Shi-Ting (2002) ’How Will Patents on Business Methods Affect E-commerce’, Journal of Intellectual Property Rights 2002
COHEN J E – LEMLEY M A (2001) ’Patent Scope and Innovation in the Software Industry’, California Law Review 89
FRANZOSI M (2003) ’Non-Obviousness’, The Journal of the World Intellectual Property 2003 JAMIESON M (2001) ’Copyright for Computer Software’, The Juridical Review 2001
Karjala D S (1998) ’The Relative Roles of Patent and Copyright in the Protection of Computer Programs’, The John Marshall Journal of Computer & Information Law 1998
LAAKKONEN A – WHAITE R (2001) ’The EPO Leads the Way, but Where To?’, EIPR 23
Lande R H, Sturgis M. Sobin (1996) ’Reverse Engineering of Computer Software and U.S. Antitrust Law’, Harvard Journal of Law and Technology 1996
LEE M (1998) ’How Could Software Patent Law Impact Electronic Commerce?’, available at <http://cyber.law.harvard.edu/fallsem98/final_papers/Lee.html> (09/07/2003)
MACLUCKIE A (2001/2002) ‘United States v. Microsoft: A Look at the balancing act between copyright protection for software, intellectual property rights and the Sherman Antitrust Act’, Huston Business & Tax Law Journal 2001/2002
MEIJBOOM A P (1993) The EC Directive on Software Copyright Protection in JONGEN H D J – MEIJBOOM A P (eds.) Copyright Software Protection in the EC (Deventer – Boston Kluwer)
Morton C (2002) ’Business-Method Patents: Of Questionable Validity?’, Computer Law Review and Technology Journal 2002
Olsson H (2000) ’Electronic Commerce and Intellectual Property Developments in Europe’, Journal of Intellectual Property Rights 2000
REID K A (2001) ‘The Microsoft Litigation from a Law and Economic Perspective’, The Digest 2001
Saladi I. (2000) ’Computer Software: Patentable Subject Matter Jurisprudence Comes of Age’, The John Marshall Journal of Computer & Information Law 2000
SAMUELSON P – SCOTCHMER S (2002) ’The Law and Economics of Reverse Engineering’, Yale Law Journal 2002
SCHIUMA D (2000) ’TRIPs and Exclusion of Software ‘as Such’ from Patentability’, IIC 31
VIETZKE L.L. (1993) ‘Software Patent Protection: A Problem-Solution Theory for Harmonizing the Precedent’, Computer-Law Journal 1993
Weibel B (2002) ’Stellungnahme zur geplanten EU-Richtlinie betreffend die Patentierbarkeit von computerimplementierten Erfindungen’, Zeitschrift für Immaterialgüter-, Informations- und Wettbewerbsrecht 2002
WEISER P (2003) ’The Internet, Innovation, and Intellectual Property Policy’, Columbia Law Review 103
WILLIAMSON S F (1998) ’The International Enforcement of Software Copyrights and Patents’, Computer Law Review and Technology Journal 1998
Online Sources
Software Patents: A clicking bomb in The Economist September 4 2003, available at <http:/www.economist.com/business>)EU Software Patent Directive Core Amendments 2009-09-12, available at < http://swpat.ffii.org/papers/eubsa-swpat2002/prop/mini/index.en.html >’
EU Parliament Votes for Real Limits on Patentability’ available at <http://swpat.ffii.org/news/03/plen0924/index.en.html> (25/09/2003)
’U.S.P.T.O. Manual of Patent Examining Procedure’ available at <http://www.uspto.gov/web/offices/pac/mpep/> (21/09/2003).)
‘Revision of the European Patent Convention: Background and outline proposals’ available at <http://european-patent-office.org/epo/dipl_conf/background.htm> (26/08/2003)
‘European Patents: Amendments to the European Patent Convention’ available at <http://www.newburnellis.co.uk/epcamtxt.htm> (26/08/2003)
‘Comments on the draft EC Directive on the Patentability of Computer Related Inventions’ (Document n° 450/953 Rev., 12 September 2002) prepared by Commission on Intellectual Property (Department of Policy and Business Practices at the International Chamber of Commerce), available at <http://www.iccwbo.org/home/statements_rules/statements/2002/ec_directive_patentability.asp> (14/07/2003).
‘U.S. Comments on the Draft European Parliament Amendments to the Proposed European Union Directive on the Patentability of Computer-implemented Inventions’ prepared by the ‘Mission of the United States of America to the European Mission’ available at <http://swpat/ffii.org/papers/eubsa-swpat0202/ustr0309> (18/09/2003).
Case Law
EPO Case Law
Decision T 84/0284
Decision T 97/0935
Decision T97/1173 Controlling pension benefits system/PBS T-0931/1995
Koch & Sterzel T26/86 (21.5.87) [1988] OJEPO 19
ALCAN/Aluminum alloys ((T-465/92) ALCAN/Aluminum alloys [1995] E.P.O.R. 501.)
ECJ Case Law
Case C-377/98 Kingdom of the Netherlands v European Parliament and Council of the European Union E.C.R. 2001 page I-07079
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