EC Proposal for a Directive
on the
Patentability
of
Computer-Implemented Inventions
Tim Frain
Director of IPR
NOKIA
9 July 2002
1
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
What counts as an invention
under the European Patent Convention?
• Not “inventions” include:
•
Discoveries, scientific theories, mathematical methods
•
Aesthetic creations
•
methods for performing mental acts, playing games or doing business
•
Programs for computers
•
Presentations of information
[Art. 52(2) EPC]
• BUT only to the extent the patent relates to that subject matter as such
[Art. 52(3) EPC]
• Excluded categories lack technical character
2
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Software patenting in Europe - current state
• Lead to popular misconception
•
computer-related inventions not patentable
•
especially among SMEs and private individuals
• “Adventurous” patent applicants pushed forward the frontiers
• Case law over 20+ years has broadened scope
• In practice patents are allowed for:
3
© NOKIA
•
computer implemented inventions - if "technical contribution"
•
software (computer programs per se, even as a record on a carrier)
•
business methods implemented in technical apparatus
•
“pure” business methods excluded
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Leading Cases in EPO (BoA)
• Vicom. T 208/84 (July 1986). Allowed
•
•
Digital processing images (2-d data array)
Technical character test originated
• Koch/Sterzel. T 26/86 (May 87). Allowed
•
•
X-ray apparatus
If invention is a mix of technical and non-technical features, the non-technical
means does not detract from technical character
• IBM Text processing cases T 52/85, T 121/85, T 95/86 (1989-91). Refused
• Sohei T 769/92 (May 1994). Allowed
•
•
General purpose management system - business method
But not business method or computer program"as such"
• IBM Program Product claims (1999). T 1173/97, T 935/97. Allowed
•
Computer programs on a carrier not necessarily computer programs "as such"
• Pension Benefits System. (2000) T 931/95. Refused
•
•
4
© NOKIA
Pure business method
Apparatus claim qualified as technical character, but no technical problem
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
The “problem” in Europe
• Single law (EPC)
•
National laws based on EPC
• Divergent interpretation by
•
EPO Boards of Appeal (EPO pre-grant patents only)
•
National POs (national patents only)
•
National Courts (national and EPO post-grant patents)
• No supra-national body making binding decisions
5
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Example of Divergence - 1
Program Product claims (software on a carrier)
Allowable
6
© NOKIA
EPO
YES
since 1999 (IBM T1173/97 & T0935/97)
UKPO
YES
since 1999 (UKPO Practice note)
DEPO
YES
since 2001 (BGH case X ZB 16/00)
others
UNKNOWN
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Example of Divergence - 2
• UK Courts have taken stricter view of statutory exclusions
• Is invention a business method, or mental act?
• Apply as FIRST test, which trumps all else
• Cases:
7
© NOKIA
•
Merrill Lynch [1989] RPC 561 – business method
•
Raytheon [1993 RPC 427] – mental act
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Example of Divergence - 3
• Geman jurisprudence has taken less strict view:
• Allow business methods with a technical character
• Even if contribution is non-technical
•
Automatic Sales Control Case [1999] GRUR 1078
•
Speech Analysis Apparatus [2000] GRUR 930
• Bundesgerichthof recently (Oct 2001) says EPO BoA
approach is correct
•
8
© NOKIA
Requires inventive technical contribution (X ZB 16/00)
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Background to the Directive Proposal
• 1997 Commission Green Paper
•
UKPO Public Conference 1994
• 1999 Follow-up Communication, concluded:
9
© NOKIA
•
Lack of clarity and certainty
•
Conditions not uniform
•
Effects on internal market
•
Need for Directive
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Parallel EPO Initiative
• EPC Revision 2000
• EPO proposal to delete “computer programs” from Article
52(2) EPC
• Revision conference rejected proposal
•
Deferred for later revision
•
Pending imminent EC consultation
• No impact on existing EPO practice
10
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Background to the Directive Proposal
• October 2000 EC Consultation
• 1450 responses – two camps:
11
© NOKIA
•
Patents support innovation (big business)
•
Patents stifle innovation (small sw developers)
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
EC Consultation Process
• Traditional business mostly wants:
•
Patents for inventions that have technical ingredient only
•
Includes computer-related inventions
• Includes software per se
•
Excludes "pure" (i.e. non-technical) business methods
• Open source community views cover:
12
•
No patents for software
•
No patents for sw running on general purpose computers (Eurolinux “official” position)
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
The Commission’s Proposal
• No justification for major or sudden change in either direction
• Harmonisation based on current EPO practice
•
13
© NOKIA
Follows Pension Benefits case (T 931/95)
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
The need for a Proposal
• Eliminates divergences => harmonisation
• Increases legal certainty
• No extension of patentability
•
e.g. to “pure” business methods
• Allows political debate
14
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
The Proposed Directive
• 11 short Articles (2.5 pages)
•
Including formalities
• 19 Recitals (3 pages)
• Explanatory Memorandum (16 pages)
• FAQs
15
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Main Features (principles)
• Relates to computer implemented inventions (CII)
[Art.1]
•
Inventions implemented through the execution of software
[Art.2]
• Not a sui generis right
•
CIIs regarded as belonging to field of technology
[Art. 3]
•
protection within general patent law principles
• Review after three years
[Art. 8]
16
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Main Features (substantive)
• Requirement for Technical Contribution
[Art. 4.2]
•
Excludes “pure” business methods
•
Consider claim as a whole
[Art. 4.3]
•
Linked to inventive step (non-obviousness)
[Art. 2(b)]
• Form of claims prescribed/limited
•
Programmed apparatus or processes running in such apparatus
(only)
[Art. 5]
• Interoperability
•
17
© NOKIA
Does not override reverse engineering permitted by copyright
Directive 91/250/EEC
[Art. 6]
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Concerns:
1. Technical Contribution
• “Loose” definition of Technical Contribution
• (Too) closely linked to obviousness test?
• Covers inventions with a mix of technical and nontechnical features?
• Intention is good, but does language deliver?
• No definition of “technical”
18
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
[Art. 2(b)]
Concerns:
2a. Form of Claims
• Intends to prohibit Program Product Claims?
•
See FAQs (not clear from Proposal per se)
• Retroactive effect?
19
© NOKIA
•
Intention unclear – no transitional provisions
•
Many patents (will be) granted with such claims
•
Confusing situation for 20 yrs after Dircetive
•
Could mislead esp. SMEs
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Concerns:
2b. Form of Claims
• Unfair to developers of innovative (technical) software?
• No protection for innovative software per se:
• Must rely on contributory infringement
•
But only if supply in country where invention is finally used
•
No infringement if innovative software is exported for final use
elsewhere
• Contravenes TRIPS Art. 27?
20
© NOKIA
•
No restrictions on form of claim in other technology field
•
Discrimination against this field of technology
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Concerns:
3. Interoperability
• Is Art. 6 needed as well as Art. 5?
• Does Art. 6 go too far?
21
© NOKIA
•
Introduces harmonised experimental use exception into patent law?
•
Does it erode patent holders rights beyond what was intended?
•
Could it have unexpected consequences?
•
What are the otherwise infringing acts which are excluded?
•
What is the position if a relevant patent and copyright are in different
ownership?
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Directive Proposal
Conclusions – Industry View
• Welcomes the Commission’s initiative
• Supports the general principles and aims
•
•
•
•
Patents available for CIIs that are new, non-obvious and capable of industrial
application
Patents not available for “pure” business methods lacking a technical contribution
Enhanced legal certainty
Avoiding sudden change in the law
• Technical Contribution test needs clarification
• Against exclusion of program product claims
• Impact of interoperability provisions Art. 6 needs to be
considered more carefully
22
© NOKIA
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF
Directive Proposal
Next Steps
• Co-Decision Process
•
•
Parliament
•
Legal Affairs Committee Hearing October 2002
•
Lobbying continues
Council (Member States)
• Transposition into National Laws
• Action in EPC context
23
© NOKIA
•
Amendment of Art. 52(2) not needed?
•
Directive has no direct effect on EPO/EPC
Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF