1 © nokia bournemouth university school of finance & law.ppt/09.07.02 / tjf ec proposal for a...

1 © NOKIA Bournemouth University School of Finance & Law.PPT/09.07.02 / TJF

EC Proposal for a Directive on the

Patentability of

Computer-Implemented Inventions

Tim FrainDirector of IPR

NOKIA9 July 2002


What counts as an invention under the European Patent Convention?

• Not “inventions” include: • Discoveries, scientific theories, mathematical methods

• Aesthetic creations

• methods for performing mental acts, playing games or doing business

• Programs for computers

• Presentations of information[Art. 52(2) EPC]

• BUT only to the extent the patent relates to that subject matter as such

[Art. 52(3) EPC]

• Excluded categories lack technical character


Software patenting in Europe - current state

• Lead to popular misconception• computer-related inventions not patentable

• especially among SMEs and private individuals

• “Adventurous” patent applicants pushed forward the frontiers

• Case law over 20+ years has broadened scope

• In practice patents are allowed for:• computer implemented inventions - if "technical contribution"

• software (computer programs per se, even as a record on a carrier)

• business methods implemented in technical apparatus

• “pure” business methods excluded


Leading Cases in EPO (BoA)

• Vicom. T 208/84 (July 1986). Allowed• Digital processing images (2-d data array)• Technical character test originated

• Koch/Sterzel. T 26/86 (May 87). Allowed • X-ray apparatus• If invention is a mix of technical and non-technical features, the non-technical

means does not detract from technical character

• IBM Text processing cases T 52/85, T 121/85, T 95/86 (1989-91). Refused

• Sohei T 769/92 (May 1994). Allowed• General purpose management system - business method• But not business method or computer program"as such"

• IBM Program Product claims (1999). T 1173/97, T 935/97. Allowed• Computer programs on a carrier not necessarily computer programs "as such"

• Pension Benefits System. (2000) T 931/95. Refused• Pure business method• Apparatus claim qualified as technical character, but no technical problem


The “problem” in Europe

• Single law (EPC)• National laws based on EPC

• Divergent interpretation by• EPO Boards of Appeal (EPO pre-grant patents only)

• National POs (national patents only)

• National Courts (national and EPO post-grant patents)

• No supra-national body making binding decisions


Example of Divergence - 1

Program Product claims (software on a carrier)

Allowable

EPO YES since 1999 (IBM T1173/97 &

T0935/97)

UKPO YES since 1999 (UKPO Practice note)

DEPO YES since 2001 (BGH case X ZB 16/00)

others UNKNOWN



• UK Courts have taken stricter view of statutory exclusions

• Is invention a business method, or mental act?

• Apply as FIRST test, which trumps all else

• Cases:• Merrill Lynch [1989] RPC 561 – business method

• Raytheon [1993 RPC 427] – mental act



• Geman jurisprudence has taken less strict view:

• Allow business methods with a technical character

• Even if contribution is non-technical• Automatic Sales Control Case [1999] GRUR 1078

• Speech Analysis Apparatus [2000] GRUR 930

• Bundesgerichthof recently (Oct 2001) says EPO BoA approach is correct

• Requires inventive technical contribution (X ZB 16/00)


Background to the Directive Proposal

• 1997 Commission Green Paper• UKPO Public Conference 1994

• 1999 Follow-up Communication, concluded:• Lack of clarity and certainty

• Conditions not uniform

• Effects on internal market

• Need for Directive


Parallel EPO Initiative

• EPC Revision 2000

• EPO proposal to delete “computer programs” from Article 52(2) EPC

• Revision conference rejected proposal • Deferred for later revision

• Pending imminent EC consultation

• No impact on existing EPO practice


• October 2000 EC Consultation

• 1450 responses – two camps:

• Patents support innovation (big business)

• Patents stifle innovation (small sw developers)

Background to the Directive Proposal


EC Consultation Process

• Traditional business mostly wants:

• Patents for inventions that have technical ingredient only

• Includes computer-related inventions• Includes software per se

• Excludes "pure" (i.e. non-technical) business methods

• Open source community views cover:

• No patents for software

• No patents for sw running on general purpose computers (Eurolinux “official” position)


The Commission’s Proposal

• No justification for major or sudden change in either direction

• Harmonisation based on current EPO practice

• Follows Pension Benefits case (T 931/95)


The need for a Proposal

• Eliminates divergences => harmonisation

• Increases legal certainty

• No extension of patentability • e.g. to “pure” business methods

• Allows political debate


The Proposed Directive

• 11 short Articles (2.5 pages)

• Including formalities

• 19 Recitals (3 pages)

• Explanatory Memorandum (16 pages)

• FAQs


Main Features (principles)

• Relates to computer implemented inventions (CII)[Art.1]

• Inventions implemented through the execution of software[Art.2]

• Not a sui generis right• CIIs regarded as belonging to field of technology

[Art. 3]

• protection within general patent law principles

• Review after three years[Art. 8]


Main Features (substantive)

• Requirement for Technical Contribution [Art. 4.2]

• Excludes “pure” business methods• Consider claim as a whole [Art. 4.3]

• Linked to inventive step (non-obviousness) [Art. 2(b)]

• Form of claims prescribed/limited• Programmed apparatus or processes running in such apparatus

(only) [Art. 5]

• Interoperability• Does not override reverse engineering permitted by copyright

Directive 91/250/EEC [Art. 6]


Concerns:

1. Technical Contribution

• “Loose” definition of Technical Contribution [Art. 2(b)]

• (Too) closely linked to obviousness test?

• Covers inventions with a mix of technical and non-technical features?

• Intention is good, but does language deliver?

• No definition of “technical”


Concerns:

2a. Form of Claims

• Intends to prohibit Program Product Claims?• See FAQs (not clear from Proposal per se)

• Retroactive effect?• Intention unclear – no transitional provisions

• Many patents (will be) granted with such claims

• Confusing situation for 20 yrs after Dircetive

• Could mislead esp. SMEs


Concerns:

2b. Form of Claims

• Unfair to developers of innovative (technical) software?

• No protection for innovative software per se:

• Must rely on contributory infringement • But only if supply in country where invention is finally used

• No infringement if innovative software is exported for final use elsewhere

• Contravenes TRIPS Art. 27?• No restrictions on form of claim in other technology field

• Discrimination against this field of technology


Concerns:

3. Interoperability

• Is Art. 6 needed as well as Art. 5?

• Does Art. 6 go too far?

• Introduces harmonised experimental use exception into patent law?

• Does it erode patent holders rights beyond what was intended?

• Could it have unexpected consequences?

• What are the otherwise infringing acts which are excluded?

• What is the position if a relevant patent and copyright are in different ownership?


Directive ProposalConclusions – Industry View

• Welcomes the Commission’s initiative

• Supports the general principles and aims• Patents available for CIIs that are new, non-obvious and capable of industrial

application• Patents not available for “pure” business methods lacking a technical contribution• Enhanced legal certainty• Avoiding sudden change in the law

• Technical Contribution test needs clarification

• Against exclusion of program product claims

• Impact of interoperability provisions Art. 6 needs to be considered more carefully


Directive ProposalNext Steps

• Co-Decision Process• Parliament

• Legal Affairs Committee Hearing October 2002

• Lobbying continues

• Council (Member States)

• Transposition into National Laws

• Action in EPC context• Amendment of Art. 52(2) not needed?

• Directive has no direct effect on EPO/EPC

1 © nokia bournemouth university school of finance & law.ppt/09.07.02 / tjf ec proposal for a...

Documents

technical character

technical problem slide

business programs

mix of technical

carrier business methods

sohei t

national courts national

business method raytheon