Journal of Information, Law and Technology
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
istvanerdos@yahoo.co.uk
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).
1
http://www2.warwick.ac.uk/fac/soc/law2/elj/jilt/2004_3/erdos/
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.
1. Introduction - A Community Legal Instrument Appears on the Horizon…
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 patents2, 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 Directive8 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
2
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 certainty11 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 contribution13 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 matters14, such as pure business methods.15
3. Overview of the Main Provisions of the Proposed Directive16
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 ‘computerimplemented 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 law18.
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.
3
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 computerimplemented 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 Agreement24. 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 computerimplemented 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 computerimplemented 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 computerimplemented 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 EPC31, 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 requirement33
– 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 present35, 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
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technical contribution), the examiners turn to the application of the so-called problemsolution 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 computerimplementation 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
543 of the Commissions proposal44 – which leaves the path levelled by the practice of the
EPO – computer-implemented inventions can be claimed either as a product claim45 or as
a process claim46. 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
formulation48- 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 Directive51 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
5
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 manner57, software companies always want to control data
exchange standards in order to deny competitors access to the market, which is an anticompetitive behaviour. However, as it turned out for example in the Microsoft case58, 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 monitor61 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 computerimplemented inventions is already accepted in the EPO practice. In September 2003 the
European Parliament adopted the proposal65 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
6
the Commission67, 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 computerimplemented 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
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 2nd edition (London: Sweet &
Maxwell)
Articles (Paper, Online), Reviews
7
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
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)
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)
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
8
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
9
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_patentabili
ty.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
10
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
1
Proposal for a Directive of the European Parliament and of the Council on the patentability of computerimplemented 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
Although, they are tend to follow the way of application of the European Patent Convention (EPC) rules
developed by the EPO and levelled by the case law. Even in the U.K., which country is usually known as
an awkward partner in any integration or harmonization process. 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.
See: Amendment 2 Recital 5 reads ‘…the legal rules governing the patentability of computerimplemented 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.’
7
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
11
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-patentoffice.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 question alike 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 C377/98 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
12
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).
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.’
14
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 COMPUTERIMPLEMENTED 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 Computerimplemented 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;
13
Article 11 Addressees.
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-patentoffice.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).
18
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 technology
Member 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 traderelated 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 (19861994). 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.
14
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).
25
26
See also: Recital 11 of the amended proposal.
27
28
Art 4 (1) of the Proposal, first sentence (with the amendments proposed by the Parliament)
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
results
d., 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
15
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 4th 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.
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).
42
43
44
See also Recital 13 d (new) of the Proposal (as amended by the Parliament).
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
16
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.
49
See Recital 13 (b).
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’.
57
See: Recital 8.
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
17
its low-end servers. (See: e.g. <http://www.hostingtech.com/news/2003/8/7/>) For literature on this, read
WEISER (2003) p560, 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 24th of September 2003. (364 votes in favour, 153 against, 33 abstentions).
See: ‘EU Parliament Votes for Real Limits on Patentability’ available at
http://swpat.ffii.org/news/03/plen0924/index.en.html (25/09/2003).
66
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, 18th May 2004.
See, 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 <patents@aful.org>.
70
18