Journal of Information, Law and Technology
Certifying Uncertainty: Assessing the Proposed Directive
on the Patentability of Computer Implemented Inventions
Luca Egitto
Queen Mary and Westfield, University of London
bongotronic@hotmail.com
This is a refereed article published on: 15 December 2004
Citation: Egitto, Certifying Uncertainty: Assessing the Proposed Directive on the
Patentability of Computer Implemented Inventions’, 2004 (3) The Journal of Information,
Law and Technology (JILT). http://www2.warwick.ac.uk/fac/soc/law2/elj/jilt/2004_3/egitto/
Abstract
The proposal for a Directive on the patentability of computer implemented inventions issued
in 2002 by the European Commission was amended by the European Parliament last
September 2003. On 18 May 2004 the Council discarded most of the Parliament’s
amendments and forwarded a proposal that was more practical and less concerned with
potential distortions of a broad patent protection scheme for software. The specific features of
software make it difficult to apply traditional IP rights such as copyright and patents and give
rise to judicial controversies and challenging interpretations. This article will analyze the
current legal framework for computer programs, the possible outcomes of the Directive, and
the rift between the European Parliament and the Council.
Keywords: Copyright, patents, computer invented inventions.
1. Introduction
In February 2002 the European Commission introduced a proposal concerning the
patentability of computer implemented inventions, otherwise known as software patents. The
main aim of the proposal was to harmonize the interpretation of the European Patent
Convention by the national courts, and to promote innovation within the European market.[1]
In September 2003 the Proposal went to the European Parliament for its first reading and
numerous amendments were made to ensure unlimited patentability was avoided. At the end
of 2003, the Council delayed examination of the amendments until January, whereupon the
Irish Presidency immediately started working towards a straighter, faster, and broader patent
protection scheme for computer programs. Since then, the tension between the Council and
Parliament has been mounting. The precise guidelines drawn up under the Irish Presidency
which discarded the vast majority of the amendments made by the Parliament were eventually
agreed by the EU ministers of the Competitiveness Council.[2] Of the original 120
amendments introduced by the Parliament, only 21 remain.[3] At present the document is
being sent to the European Parliament for its second reading, as part of the Co-decision
Procedure. The issue, which has increasingly become a matter of political debate, will be
discussed by the ‘new’ Parliament resulting from the elections last June. The roots of the
tension underpinning this debate lie in the different conceptions of the inventiveness
underlying software, and in the radically different views programmers, researchers and
politicians have as to the appropriate tool to foster innovation. Before dealing with these
political and economic issues, it would be appropriate to analyze the existing scheme of legal
protection and nature of computer programs
2. Software as Expression: Copyright or Copywrong?
Intellectual property always acted as guardian for innovative ideas and valuable technological
improvements, especially since the amount of investment in research and development
became a substantial part of corporate spending. When computers were mainly mechanical
devices whose instructions came from punch cards,[4] the whole area seemed clearly to
belong to the realm of technological innovation for which patent protection could be
granted.[5] Soon this certainty disappeared, since the critical duties of the machine were
based on the instructions that the program put forward to govern the computer, and such
instructions were represented graphically and recorded on a medium to be read.[6] When
WIPO was asked at the beginning of the seventies to conceive a legal framework to protect
computer programs, the final outcome was predominantly copyright-based.[7] Throughout
the eighties and early nineties legislatures turned to the copyright regime as the most
appropriate intellectual property right for protecting software science – computer programs
were regarded as literary works – an original literary expression. [8] Of late however the
boundaries between hardware and software have become less neat and ever changing, and
doubts have begun to be raised as to the appropriateness of the copyright system within this
area of technological innovation.
There are a number of conceptual and practical problems that affect the appropriateness of
copyright as the main protection for computer programs. The first conceptual problem
concerns the nature of ‘literary work’ that all major regional and international regulations
confer to computer programs.[9] All works that constitute subject matter of copyright are
normally intelligible and comprehensible to humans in the sense that they can be perceived
and appraised by observation. In the case of computer programs, this would apply to source
code (that is human readable), but not to object code (that is the source code compiled into the
machine in order to be read and directed to specific applications). Within the current legal
framework, this latter code is equated to the source code as the expression protected by
copyright although it is not understandable or appraisable as such. Also, it is not just the
nature of these instructions that gives rise to doubts as to the appropriateness of copyright as a
method of protection, it is their function, in that the function of the traditional works protected
by copyright is to convey information to humans, irrespective of the reaction, while a
computer program carries instructions aimed at causing a specific behaviour into a
device.[10]
On a more practical level during the eighties and the nineties, problems concerning the
originality of object codes, and the subsistence[11] of copyright in program codes[12] and
spreadsheets[13] were discussed by judges on both sides of the Atlantic.[14] The most
problematic issues were the definition as to what constituted actual copying of a computer
program, what constituted a substantial part,[15] and the meaning of literal and non-literal
copying.[16] Since in most cases direct copying was impossible to prove, the courts
developed the doctrine of ‘look and feel’[17] to assess the overall functioning of the
program,[18] and to understand whether there was actual copying of it. Drawing upon the
‘look and feel’ doctrine, and the AFC test,[19] it was considered that even without line-byline[20] copying there could still be misappropriation and infringement. At the same time in
Europe, the ability to decompile software, provided in art.6 on the Directive on the legal
protection of computer programs,[21] was an opportunity given to allow programs to use the
same protocols without affecting the respective underlying rights.
This liberty was granted because computer programs were assimilated to other copyrighted
works that could be consulted without being copied.[22] Software manufacturers began being
doubtful about the effectiveness of copyright as soon as reverse-engineering exceptions and
difficulties in proving copying made a stronger safeguard of their products desirable.
Although the ‘look and feel’ doctrine and the AFC test tried to address the issue of copying,
the problem of protecting the expression alone and not the idea underlying the program led
the right-holders to rethink their IP strategy. The natural outcome of such evolution was the
IP right that more closely protects an inventive idea: patents.
3. Software Patents: The U.S. and the E.U.
Since one of the reasons purported to justify the introduction of the Directive[23] was that
global harmonization of patent law was needed, it is worth discussing the most debated patent
jurisdiction at the moment, the U.S. U.S. legislation has a broad statutory definition of
patentable inventions:
U.S. Code , Title 35, Part II, Chapter 10, Sec. 101. - Inventions patentable
Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a patent
therefore, subject to the conditions and requirements of this title .[24]
The negative limit was established by the Supreme Court in Diamond v Diehr:
We recognize, of course, that when a claim recites a mathematical formula (or scientific
principle or phenomenon of nature), an inquiry must be made into whether the claim is
seeking patent protection for that formula in the abstract. A mathematical formula as such is
not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U.S. 63 (1972), and
this principle cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment.[25]
However this same decision opened something of a Pandora’s box :
When a claim containing a mathematical formula implements or applies the formula in a
structure or process which, when considered as a whole, is performing a function which the
patent laws were designed to protect (e.g., transforming or reducing an article to a different
state or thing), then the claim satisfies 101's requirements.
The broad statutory definition and the USPTO’s explicit willingness to allow patent
protection for software shifted the question from ‘can software be patented’ to ‘to what extent
can software be patented’.[26] In fact, while the USPTO’s 1996 Guidelines gave certainty as
to patentability of computer implemented inventions (referring to either the computer as a
whole, or the memory that directs it, or the process put forward by the computer) case law
lifted the bar even higher.[27]
While the Diamond v Diehr decision softened the line on the unpatentability of algorithms,
the then Court of Customs and Patent Appeals developed a test (the FWA test) that practically
allowed patentability by relaxing the physicality requirement:[28]
It is first determined whether a mathematical algorithm is recited directly or indirectly in the
claim. If so, it is next determined whether the claimed invention as a whole is no more than
the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is
not applied to or limited by physical elements or process steps.[29]
After this physicality requirement was further softened by the In re Alappat decision,[30] the
decision of the State Street Bank[31] case determined that the issue was whether the algorithm
had been applied in such a way to produce tangible useful results. Thus, the open ended
statutory definition and the approach sensitive to improvements in efficiency and usefulness,
gave the U.S. a reputation as a more liberal patent jurisdiction. However, another view is that
the threshold for patentability in the U.S. is generally too low, and the generous approach of
the USPTO strengthened big corporations[32] by allowing broad claims and non inventive
patents, like Amazon’s ‘One Click’.[33] We will see below that the European legal
framework differs substantially from the American one, but nonetheless this difference almost
fades away thanks to the European Patent Office’s practice.
The Berne Convention and the CDPA define what a literary work is, while the WIPO treaty
and the Council Directive 91/250 provide copyright protection for computer programs,
‘whatever the form or mode of their expression’.[34] If we combine this with the provisions
of EPC 52 (2) (‘the following shall not be regarded as inventions within the meaning of
paragraph 1: … computer programs..’) we could say that at least formally in Europe,
computer programs lie outside the range of patentable inventions. In practice however this is
not the case. In fact, although this is still the current legislation, the EPO have granted some
30,000 patents for computer implemented inventions.[35] It narrowed the art.52 (2)
exclusion of computer programs in the VICOM case:
[A] claim directed to a technical process which is carried out under the control of a program
(whether by means of hardware or software) cannot be regarded as relating to a computer
program as such.[36]
The outcome of the EPO’s practice was that patents began to be granted to computer
programs, relying on the ‘technical effect’ doctrine.[37] Computer programs that had a
technical effect per se, or in the execution of their instructions, and had a physical effect as
outcome of their operations were considered suitable for patent protection.[38] After leading
cases such as VICOM and IBM,[39] the way was actually open for patent protection for
computer programs, eroding the significance of EPO’s original guidelines.[40] Nevertheless
the requirement for technical character allowed for different interpretations to emerge.
4. Technical Contribution: Magic Formula or Legal Compass?
According to the EPO’s practice,[41] if a program constitutes a ‘technical contribution’ to the
state of the art, and it is new and capable of industrial application, it is patentable. This may
involve the solution of a problem by the invention, or an alternative solution for an already
solved problem. The VICOM decision, and the two IBM cases,[42] shaped this feature of
‘technical contribution’, defining as patentable those programs that have a ‘technical
character’, sidestepping the exclusion provided by the Guidelines of the EPO itself.[43] This
exclusion implied that a computer program claimed by itself or on carrier could not be
patented, but the interpretation put forward by EPO meant that this exclusion could be
circumvented by the assessment of the further effects of the program. In other words, the
execution of the instructions of the program might produce ‘technical effects’ when the
software solves a technical problem. The rationale comes from the practice of German patent
courts, and was used by EPO to justify the grant of patents to a subject matter formally
excluded from such protection. In Germany, while it is settled that patents cover not only the
surface but also the theory underlying an invention, nonetheless the idea of patenting
algorithms or methods to process data has always been opposed.[44] Therefore, prima facie,
to be afforded a patent for a computer program, it is necessary to link the software to an
apparatus in order to materially acknowledge the existence of a product or process as subject
of the claim. However, this ‘technical contribution’ does not provide a physicality
requirement as it may seem at first. In fact the EPO decision in IBM/Data Processor
Network[45] made it clear that this requirement may be otherwise satisfied. It was held that
even when the claim refers to a communication method between ‘program and data files’,[46]
the ‘technical contribution’ requirement is satisfied if the invention solves a technical
problem.[47]
The conclusion of this interpretative evolution came with the decision of the EPO Board in
IBM/Computer program product[48] where the technical contribution was found in the mere
fact that the program was claimed through its carrier medium. With this decision the EPO
concluded that computer programs able ‘to produce a technical effect’ are patentable subject
matter within the meaning of 52(1) of the EPC. This may be considered as the end of the
software ‘as such’ exclusion.[49] Despite the above mentioned tradition of German patent
courts requiring the program to be attached to a physical process or device, the recent EPO’s
practice basically allows for the so called ‘program claims’. The interpretation of
IBM/Computer program product suggests that the technical effect may be confined to known
physical features, external to the program and simply kick-started by data processing
methods. In such cases, novelty would be relegated to merely abstract mathematical methods,
giving rise to ‘program claims’ without an individual technical character. It is now clear that
the ‘technical contribution’ doctrine, rather than being a physicality requirement, refers to
efficiency and usefulness criteria, thus quite closely resembling to the American system.
Not surprisingly, this ‘technical contribution’ doctrine is at the same time criticized and
disputed as to its real meaning within the context of the Directive. Council's draft recital 12
provides that :
[W]here it 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, it will lack an
inventive step and thus will not be patentable.
In the light of what was explained before, this definition may seem quite vague, and some
critics of the Directive have called for the ‘technical character test’ to be applied before
assessing the technical contribution to the state of the art, so to filter out non technical
inventions (software as such).[50] Activists such as Eurolinux and the Foundation for a Free
Information Infrastructure argue that the ‘technical contribution’ has been found by EPO in a
very broad range of cases, many of which were controversial as to their effective technicality.
While it is settled[51] that the processing of physical data such as images or parameters of
industrial processes by computer programs meets the requirement, that is not the case when
software merely changes the way a computer works with an unperceivable technical
effect[52]. In the latter case, when a program saves memory space, or increases the speed of
data processing, simple efficiency and security requirements are met,[53] but not necessarily a
technicality one.[54] In other words, acknowledging technical character with such a generous
approach would confer the nature of technical contribution to a broad range of features, such
as ‘the problem to be solved, the implementation of the solution, the function of the
implementation and its effects’.[55]
The fact that the ‘technical contribution’ requirement is central to the draft Directive and that
its meaning is so open-ended, explains much of the controversy around the proposal. It does
not eliminate the uncertainty that pushed the Commission to propose the Directive, but rather
constitutes a codification of this uncertainty. The use of the ‘technical contribution’
requirement made by the Council in the Draft Directive is more an incentive to broaden the
range of patentable subject matter rather than a clarification of its limits, as asked by the
Parliament.[56] The rift between the Parliament and the Council of Europe refers specifically
to the wording of the Directive, both in relation to ‘technical contribution’ and ‘algorithm’.
5. The Algorithm
Computer programs are essentially algorithms. For this reason it is necessary to briefly
describe them in order to understand why they are central to the debate, and what their role is
during the functioning of the program. An algorithm is a set of instructions understandable by
humans, aimed at performing a specific task that, given a set of inputs, will result in some
recognisable ‘end-state’.[57] The algorithm tells the computer what steps to perform, in what
order and how many times, to achieve a specific task: the order of this steps and each step is
crucial to carry out a certain operation. Therefore it can be said that the algorithm is the
‘intelligence’ of the program, whose features determine the nature of the operations
performed under its governance. The algorithm is responsible for the behaviour of software,
and as it is accepted by EPO that the technical contribution may be found in its ‘further
technical effects’[58] occurring into a physical non-novel part, the following conclusion may
be drawn: the practice of EPO and its codification in the Council’s common position allows
claims where the technicality is found in known technologies and whose inventive part
consists solely of an algorithm.
If such broad definition of technical contribution remained, there could be claims for
inventions consisting of novel algorithms operating in known technical environments,
confining inventiveness to the way data structures are processed by software. In such a case,
the patent refers not to an object or a process, but to the description of how it is and how it
works, and there being a novel algorithm operating within a common technical framework,
such novelty turns out to be ‘literary’[59] rather than technical. In this light, the requirement
put forward by the Parliament, that the invention control physical forces ‘beyond digital
representation of information’, becomes an attempt to prevent controversial outcomes such as
the one described above. Open source activists call these kinds of claims ‘information
claims’ or ‘text claims’ to emphasise the monopoly over information conferred by such
patents[60].
Although the draft Directive (13a)[61] defines algorithms as non patentable, it still considers
patentable a ‘method involving the use of an algorithm’ and provides that the patent would
not monopolise that algorithm or its use in other contexts. However, it is still not clear what
use of an algorithm would be permitted and what would constitute an actionable
infringement. Once again the same regulation sets forth a provision along with the means to
circumvent it: algorithms are not patentable but ‘technical contribution’ has such a broad
meaning that the first exclusion may be sidestepped. It is the same as EPC art.52: the EPO
used 52(3) to nullify 52(2) and may use the definition of ‘technical contribution’ [art. 2 (b) of
the Council draft] to overcome the exclusion described above (13a of the Council Draft).
Given the premises of the Proposal put forward by the Commission in 2002, to eliminate
uncertainty as to what is patentable,[62] this hardly appears to have been accomplished.
6. Parliament v Council
As we have just seen, it is specifically the wording of the draft Directive that creates tension
between Parliament and the Council, the proposal of the Commission[63] creating a rift at the
highest level of the European institutions. The Parliament was lobbied by Eurolinux, while
the Council, being composed of ministers of member states, was more sensitive to the needs
of corporations.[64] The Parliament amended the Commission’s proposal in order to secure
that the current exclusion of art.52 remained, recommending a review of EPO’s practice, and
stressing that the Directive should explicitly require novelty to the technical effect itself, so
restricting patent protection in cases of data processing methods.[65] The Council replied
deeming as inappropriate and unacceptable the amendments made by the Parliament, and
issued a proposal that showed a more pragmatic approach, actually refraining from classifying
ex ante what is a patentable software invention, so to leave the doors open to future
developments.
The law-making process involving the two institutions is called ‘co-decision procedure’
(art.251 EC), and was introduced by the EC Treaty and later amended by the Treaty of
Amsterdam.[66] According to the co-decision procedure, the Commission submits the
proposal to the Council and the Parliament, the latter votes on its decision in plenary session,
and then submits the outcome of its first reading to the Council.[67] The Council may accept
the outcome or may reject it and adopt its common position, and consequently submit the
amended text to the Parliament for the second reading: if such text is not accepted by the
Parliament, the Procedure is terminated, and the Act is not adopted.[68] The two institutions
clashed on specific issues and sections of the draft Directive. What follows is an overview of
their two positions, comparing the wording used by the Parliament[69] and the Council[70] in
their respective proposals.
‘Computer implemented invention’
Parliament
'[C]omputer-implemented invention' means any invention within the meaning
of the European Patent Convention the performance of which involves the
use of a computer, computer network or other programmable apparatus and
having in its implementations one or more non-technical features which are
realised wholly or partly by a computer program or computer programs,
besides the technical features that any invention must contribute
Council
Computer-implemented invention means any invention the performance of
which involves the use of a computer, computer network or other
programmable apparatus, the invention having one or more features which
are realised wholly or partly by means of a computer program or computer
programs
‘Technical contribution’
Parliament (1) 'technical contribution', also called 'invention', means a contribution to the
state of the art in a technical field. The technical character of the contribution
is one of the four requirements for patentability. Additionally, to deserve a
patent, the technical contribution has to be new, non-obvious, and susceptible
of industrial application. The use of natural forces to control physical effects
beyond the digital representation of information belongs to a technical field.
The processing, handling, and presentation of information do not belong to a
technical field, even where technical devices are employed for such purposes.
Council (1)
Technical contribution means a contribution to the state of the art in a field of
technology which is not obvious to a person skilled in the art. The technical
contribution shall be assessed by consideration of the difference between the
state of the art and the scope of the patent claim considered as a whole, which
must comprise technical features, irrespective of whether or not these are
accompanied by non-technical features.
Parliament (2) The significant extent of the technical contribution shall be assessed by
consideration of the difference between all of the technical features included
in the scope of the patent claim considered as a whole and the state of the art,
irrespective of whether or not such features are accompanied by nontechnical features.
Council (2)
Discarded
‘Data processing’
Parliament
Member States shall ensure that data processing is not considered to be a
field of technology within the meaning of patent law, and that innovations in
the field of data processing are not considered to be inventions within the
meaning of patent law.
Council
Discarded
‘Efficiency-technicality’
Parliament
Member States shall ensure that computer-implemented solutions to technical
problems are not considered to be patentable inventions merely because they
improve efficiency in the use of resources within the data processing system.
Council
Discarded
‘Claim’
Parliament (1) Member States shall ensure that a computer-implemented invention may be
claimed only as a product, that is as a programmed device, or as a technical
production process.
Council (1)
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.
Parliament (2) Member States shall ensure that patent claims granted in respect of computerimplemented inventions include only the technical contribution which
justifies the patent claim. A patent claim to a computer program, either on its
own or on a carrier, shall not be allowed.
Council (2)
Discarded.
‘Interoperability’
Parliament
Member States shall ensure that, wherever the use of a patented technique is
needed for a significant purpose such as ensuring conversion of the
conventions used in two different computer systems or networks so as to
allow communication and exchange of data content between them, such use
is not considered to be a patent infringement.
Council
Discarded.
The European Commission proposed the Directive for competition purposes (that will be
dealt with below) and to harmonize the way national laws interpret the European Patent
Convention. While its aim was formally to introduce software patents assuring that pure
software would remain non-patentable, the outcome of the reading of Parliament and the
Council proposal do not seem to agree on any of these grounds. The Council drafted broad
and open ended legislation aimed at encouraging more applications suggesting there is ground
to enlarge the realm of patentable inventions. The Parliament stands firm requiring clear
limits to the patentability of computer programs and set out a list of detailed conditions for
such purpose. Now the Parliament is about to proceed to the second reading, that may wreck
the Directive in case of rejection of the Council’s common position. The contest is still open
but the last political agreement reached by the Council puts forward a proposal that gives rise
to several considerations. One such consideration is that leaving the wording of the Directive
as it is now may open the door to very broad claims over inventive areas that are now at a
crucial stage of their evolution. Applicants normally seek to exercise a wide monopoly, and
this aim is achieved by obtaining a broad patent, and that is easier in absence of clear limits to
patentability. The result of changing EPO’s practice during the years is also due to talented
drafters, who use clever techniques to describe the invention. The drafter may identify the
infringer or the infringing activity beforehand, have responses to possible objections
embedded in the claim, set out more scopes per claim, assign multiple claims for each
individual component and avoid descriptions that may recall mental activity. Without clear
limits and definitions of patentable subject matter, of technical contribution and
interoperability, these clever drafting techniques may confer to the patentee an undeserved
extent of monopoly.
7. Competitiveness and Innovation
The uncertainty within the EU as to what was patentable and what not, created inefficiency
because most SMEs were unaware of what was available at EPO to protect software. Most of
the patents related to software granted by EPO were afforded to non European companies,[71]
while the ambiguity regarding the interpretation of the legislation kept out of the market many
small competitors.[72] On a global level, the apparent flaw in the European legislation
arguably denied companies of E.U. member states the same degree of IP protection enjoyed
by their competitors in Japan and the U.S. Mobile phone manufacturers are definitely among
those suffering most from the lack of certainty about the degree of patent protection available
in Europe. While their competitors in U.S., Japan and South Korea operate in an environment
where the patentability of software is not disputed, Nokia, Ericsson, Philips and Siemens[73]
are still unable to carry out in full their business strategy for third generation mobiles in the
E.U.[74]
At the same time, there is a vast number of programmers, small companies and individual
users, who resist the idea of considering software as a subject matter of patent law. The Open
Source community, who heavily lobbied MEPs to counter the position of the Council, relies
on the incredible success of its project to demonstrate that property rights are detrimental to
the evolution of software. The fact that a simple handling (by means of publication for
example) of codes or algorithms may constitute an actionable infringement, is a dreadful
prospect for those like Linux users, who systematically trade on shared knowledge.
The critical point for competitiveness is not who is excluded from patent protection, but who
is excluded by patent protection. While the intention of the Commission was to make patent
protection accessible to SMEs, there is a danger that an ill drafted Directive may actually put
small companies not just outside the legal protection but also outside the market. Costs are
the main issue, since application and consultancy costs are too high for small companies and
litigation fees can be fatal: many small enterprises would immediately surrender to any
threat. If the limit of patent protection and the wording of the definitions of the Directive are
not clarified, companies with a portfolio of strong patents and resources for litigation may
simply suffocate small competitors with a ‘cease and desist’ letter. Infringing activities,
permitted acts and scope of claims should be defined in a way that prevents arbitrary use of
patent law as weapon of competition warfare.
A wider issue regarding competitiveness and innovation concerns the information architecture
and its network related aspects. A network whose applications, nodes and end user
technologies are made to work on a single prototype of computer platform is inherently
weak. It is weak in its body that communicates with a limited number of languages and
protocols, while its limbs are feeble because the end users have just a small number of choices
of applications. A network with more than one predominant language, platform and protocol
is stronger because has wider capacity in terms of data, and more solid ends due to the
possibility to shift from one system to another.
8. Conclusion
The tension between the European Parliament and the Council now involves the Commission.
Internal Market Commissioner Bolkestein did not conceal his disappointment at the large
number of amendments made by the Parliament, and while welcoming the Council’s common
position, threatened to withdraw the proposal if an agreement is not reached. He hinted at the
possibility of a renegotiation of the EPC that would not concern the E.U. and could possibly
end up in an even more pragmatic outcome. In general it is not fair to deny a patent to an
invention simply because it is based on a computer program, but at the same time software is
a problematic issue because there doesn’t seem to exist an IP right fit for its combination of
speech and behaviour. We have seen that both copyright and patent law lack something in
connection with basic features of software, and that these asymmetries still haven’t been
settled by the existing legislation. So far there has been an attempt to codify the requirement
of ‘technical contribution’ in order to eliminate uncertainty as to the patentable subject matter
of software inventions. The problem is that the meaning of this requirement is far from being
clear. The assurance made by the Commission that what was non-patentable before would
remain non-patentable, and what was patentable would remain patentable has little
significance since the distinction was and still is impossible to draw as to software. It is
important to understand that the concept of what is capable of forming the subject matter of
patents should be adapted to less physical parameters in the light of the decrease of volume of
hardware and to assist the growth of new technologies. At the same time it is necessary to
spread the benefits of the protection of intellectual property over a broader range of
companies rather than assisting large IT corporations in their attempts to set a definitive
standard. Patent protection should be accessible to SMEs, comprehensible to end users and
compatible with the Linux platform. That appears to be quite difficult at the moment, for two
specific reasons. The first regards the struggle between the two European institutions: the
Parliament sensitive to an anti-IP lobby,[75] the Council of Ministers keen on favouring
corporations with massive R&D expenditure. The second regards the procedural path of the
Directive that may still collapse, opening the way to a renegotiation of the European Patent
Convention that would hardly help towards harmonization with the E.U.
Notes and References
[1] Another important reason underlying the initiation of the proposal was that the European
Community and its members are bound to the TRIPS agreement, approved by the Council on
the 22nd December 1994, with the Decision 94/800. Art.27(1) of TRIPS provides that patents
shall be available for ‘any inventions, whether products or processes, in all fields of
technology…… without discrimination as to the place of invention and the field of
technology’.
[2] < http://register.consilium.eu.int/pdf/en/04/st09/st09713.en04.pdf>
[3] < http://www.euractiv.com/cgi-bin/cgint.exe/1130822-398?204&OIDN=1507734&home=home>
[4] Slee & Harris’ Application [1966] R.P.C. 194.
[5] Christie A (1994) ‘Designing appropriate protection for computer programs’ European
Intellectual Property Review 487.
[6] Attridge D.J.M. (2001) ‘Challenging claims! Patenting computer programs in Europe and
the USA’ Intellectual Property Quarterly 22.
[7] Model provisions on the protection of computer software, Geneva 1978.
[8] EC Software Directive (91/250/EEC).
[9] WIPO Copyright Treaty (art.4), Berne Convention for the protection of literary and
artistic works (art.2), Council Directive EC 91/250 on the legal protection of computer
programs (art.1), CDPA 1988 s.3(1), TRIPS art.10.
[10] Samuelson P, Davis R, Kapor M.D and Reichman J.H (1994)’A Manifesto for the legal
protection of computer programs’ 94 Columbia Law Review 2308.
[11] Baker v Selden 101 US 99 [1980].
[12] Sega Enterprises Ltd v Richards [1983] FSR 73; Apple Computer Inc v Computer Edge
Pty Krd [1984] FSR 246; NEC Corp v Intel Corp [645 F Supp 1485 (Minnesota, Distr. U.S.)
1985],and later hearing available at USPQ 2d [1989].
[13] Lotus Development Corp v PaperBack Software International 740 F Supp 37 [D
Mass,1990] U.S.
[14] Whelan Associates Inc v Jaslow Dental Laboratory 797 F.2d 1222 [1986] and Apple
Computer Inc v Computer Edge Pty Krd [1984] FSR 246.
[15] Cantor Fitzgerald International v Tradition UK Ltd [2000] RPC 95; Total Information
Processing Systems Ltd. v Daman Ltd. [1992] FSR 171; IBCOS Computers Ltd v Barclays
Mercantile Highland Finance Ltd [1994] FSR 275.
[16] Lotus Development Corp v Borland International Inc [1997] FSR 61.
[17] This doctrine was developed to overcome the problem of proving direct copying and
referred to a global assessment of the features of the program, in order to identifying
infringing activities even when there was no literal copying.
[18] Whelan Associates Inc v Jaslow Dental Laboratory Inc. 797 F.2d 1222 [1986].
[19] Computer Associates International v Altai Inc. 20 USPQ 2d 1641 [1992]. The AFC test
consists of three steps: in the first step (abstraction), each component of the program code is
identified. In the second step (filtration), each component is analysed to assess whether any
of the five ‘disqualifications’ apply (is the component an ‘idea’?/ is it a merger of idea and
expression?/ is it a non creative part of the program?/is it dictated by external factors?/is it
something in the public domain?). The five ‘disqualifications’ refer to the American doctrine
concerning the protectable and non protectable content of a work, see Sterling J.A.L. (2003)
‘World Copyright Law’(London) Sweet & Maxwell p.289. In the third step (comparison),
with the remaining components, the court determines whether the defendant has copied
substantial parts of the protected bits of the overall program.
[20] Cornish W and Llewellyn D (2003) Intellectual Property, 5th ed., (London: Sweet &
Maxwell).
[21] 91/250/EC.
[22] Cornish and Llewellyn, Intellectual Property.
[23] <http://register.consilium.eu.int/pdf/en/04/st09/st09713.en04.pdf>
[24] <http://www4.law.cornell.edu/uscode/35/101.html>
[25] 450 U.S. 175 [1981].
[26] Koo D (2002) ‘Patent and copyright protection for computer programs’ 2 Intellectual
Property Quarterly 172.
[27] ibid.
[28] <http://www.law.cornell.edu/patent/comments/96_1327.htm>
[29] In re Freeman, 573 F.2d 1237 C.C.P.A. [1978]; In re Walter, 618 F.2d 758 C.C.P.A.
[1980]; In re Abele, 684 F.2d 902 C.C.P.A. [1982].
[30] 33 F.3d 1526 Fed. Cir. [1994].
[31] 149 F.3d 1368 Fed.Cir.[1998].
[32] Koo ‘Patent and copyright protection for computer programs’.
[33] U.S. patent 5,960,411’A Method and System for Placing a Purchase Order Via a
Communications Network.’
[34] ‘[W]hatever’ confirms that copyright is granted as blanket protection for computer
programs; the fact that some expressions may be unintelligible to humans seems to have no
relevance.
[35] <http://europa.eu.int/comm/internal_market/en/indprop/comp/02-32.htm>
[36] VICOM T208/84. Whaite R and Lakkonen A (1999)’Analysis: the EPO simplifies
software patenting’ IPQ n.4 .
[37] Koo ‘Patent and copyright protection for computer programs’.
[38] Attridge, ‘Challenging claims!’.
[39] T 0935/97 and T1173/97 of July 1, 1998.
[40] The guidelines indicated that claims should be always rejected if contribution to the
known art resides solely on the computer program. However they were revised in 1985, after
consultation, introducing the term ‘technical contribution’. See Beresford K(2003)’Patenting
software under the European Patent Convention’(London: Sweet&Maxwell).
[41] The EPO relied on a definition of technical invention given by German courts as a
‘solution to a problem through controllable forces of nature’.
[42] T 0935/97 and T1173/97 of July 1, 1998.
[43] Koo ‘Patent and copyright protection for computer programs’.
[44] Steckler B (1994) ‘Legal protection of computer programs under German Law’ 7
European Intellectual Property Review 293.
[45] [1990] O.J. EPO 5.
[46] Attridge, ‘Challenging claims!’.
[47] The example of IBM/Computer related invention [1990] O.J. EPO 30, is helpful in
illustrating that the technicality requirement is satisfied even with a feeble tangible effect
referring to events occurring within the machine.
[48] [1999] O.J. EPO 589
[49] Cornish and Llewellyn, Intellectual Property.
[50] <http://www.ffii.org.uk/analysis/tech_character.html>
[51] VICOM T84/0208
[52] See patent EP1315358 Agilent Technologies, and patent EP 1363203 from ABB
Research, as two examples of very abstract subject.
[53] Beresford ‘Patenting software under the European Patent Convention’.
[54] <http://www.ffii.org.uk/technical.htm>
[55] Beresford ‘Patenting software under the European Patent Convention’.
[56] MEP Arlene MC Carthy (PES, UK), said Member States were bending too easily under
industry pressure. ‘The Parliament's vote was clear - we do not want software per se to be
patented. We want strict interpretations and criteria for genuine inventions. The Council
Common Position is not the final word. The new Parliament will have a second reading and I
expect there to be some tough talking and negotiations’. <http://www.euractiv.com/cgibin/cgint.exe/1130822-398?204&OIDN=1507734&-home=home>.
[57]< http://en.wikipedia.org/wiki/Algorithm>
[58] IBM T 97/1173 and T 97/0935.
[59] Beresford ‘Patenting software under the European Patent Convention’.
[60] <http://swpat.ffii.org/papers/eubsa-swpat0202/prog/index.en.html>
[61] As amended by the Council in its final draft.
[62] ‘Isolated programs will not qualify’
<http://europa.eu.int/comm/internal_market/en/indprop/comp/02-277.htm>
[63] <http://europa.eu.int/comm/internal_market/en/indprop/comp/com02-92en.pdf>
[64]
<http://www.repubblica.it/2004/e/sezioni/scienza_e_tecnologia/brevetti/brevetti/brevetti.html
>
[65]<http://swpat.ffii.org/papers/eubsa-swpat0202/plen0309/TabledByDifferentGroups.pdf >
[66] Steiner J and Woods L (2003) ‘Textbook on EC Law’(Oxford University Press).
[67] ‘Co-decision Guide’ available at http://ue.eu.int/uedocs/cmsUpload/code_EN.pdf
[68] Steiner J and Woods L ‘Textbook on EC Law’.
[69]<http://www3.europarl.eu.int/omk/omnsapir.so/pv2?LISTING=AfficheTout&PRG=CAL
DOC&FILE=20030924&LANGUE=EN&TPV=DEF#Title4>
[70] < http://register.consilium.eu.int/pdf/en/04/st09/st09713.en04.pdf>.
[71] Koo ‘Patent and copyright protection for computer programs’.
[72] Attridge, ‘Challenging claims!’.
[73]< http://www.euractiv.com/cgi-bin/cgint.exe/1593084482?714&1015=7&1014=p11054e>.
[74]Batteson A (2004)’EU Patent Directive’, n.1 Computer Law & Security Report vol.20 p
12 . Multimedia phones are actually computers that can have different applications such as
videogames and storage facilities, for which patents may constitute the appropriate tool to
protect the underlying investment.
[75]‘The danger of Software patents’ , Richard Stallman, speech at Cambridge University,
2002
< http://www.ftc.gov/os/comments/intelpropertycomments/stallmanrichard.pdf>.