|Positions||JURI 2003/04||Europarl 2003/09||CULT 2002/12||ITRE 2002/12||McCarthy 2003/02/19|
As well as amendments submitted in a draft report by the committee's rapporteur, Arlene McCarthy, the committee will also be considering further amendments submitted by its own members, and must also consider the amendments recommended by two other committees, the Industry committee (ITRE) and the Culture committee (CULT).
The JURI decision is important, as its amended report will then be submitted to the plenary for voting.
The EPO's Examination Guidelines of 1978 further elaborate on this:
Until 1986 the EPO's boards of appeal and national courts, except in the UK, firmly rejected any claims to new combinations of generic computing equipment with calculation rules (= computer programs) in whatever form. After a few years the original hurdles to patentability were eroded to a level where about 99% of all applications for pure data processing, including "computer-implemented business methods", were demed "technical" and "not directed to programs for computers as such" by the EPO. National courts in various countries did not follow the EPO's practise and revoked patents some of the patents granted under, saying that the alleged invention consisted in nothing more than a computer program, intellectual method or business method.
The Commission of the European Communities (CEC) and MEP Arlene McCarthy are proposing to make the EPO's rules obligatory for all of Europe.
Despite statements like "the EPO... facing well-drafted applications and the need to offer applicants the benefit of the doubt, are contributing to a slow but discernible drift towards wider patenting" (Arlene McCarthy 21.05.03), the CEC draft directive and McCarthy's amendments steadfastly refuse to take a stand on the critical question of what is "technical" (i.e. patentable) and what is not: it must all be left to caselaw.
The thrust of McCarthy's efforts is to ensure that the software and business method patents, which the European Patent Office (EPO) has granted against the letter and spirit of the written law in recent years, shall neither be revoked nor become unenforceable. Therefore, effectively, everything is to be patentable.
Amendment 46 to Article 3 attempts a negative definition of "technical", similar to what is found in Art 52 EPC: "... data processing should not be a field of technology for the purposes of patent law ...".
This is essential, to reformulate the principles of Art 52(2) in the language of the international treaty Art 27 TRIPs and thereby ward off recent attempts to abuse Art 27 TRIPs as a pretext for extending patentability beyond the limits of Art 52 EPC. It it the single most important principle that needs clarification.
Further clarification can be achieved by a positive definition of "technical invention", as adopted by CULT and proposed by members of the JURI committee, e.g. "a new teaching about cause-effect-relations in the use of controllable forces of nature" or "problem solution involving controllable forces of nature".
Arlene McCarthy's draft report dismisses the "technical invention" concept as an outdated peculiarity of German jurisprudence, but overlooks that the same concept is also more or less present in EPO caselaw and in many national jurisdictions (the UK being a notable exception) . "Modernist" patent law scholars have however ever since the 60s opposed the limitation of patentability to the use of forces of nature, arguing that the mission of the patent system is to "protect" today's "high-tech" innovation, or even that "information has become the fifth force of nature". It should however be understood that:
This concern is reflected in Amendment 45 (Article 2 (ba)), and several others.
In contrast, according to Art 52 EPC, the presence of a technical invention cannot be taken for granted but must be assessed. Certain items, such as algorithms, business methods and computer programs, do not qualify as technical inventions. Moreover, according to Art 52 EPC four distinct requirements for patentability must be fulfilled by the same invention, not by different parts of a claimed object. An invention is a teaching (1) about statutory subject matter which must be (2) new, (3) non-obvious and (4) susceptible of industrial application. Obviously it is not enough to have something new (e.g. a new icon), something else non-obvious (use of the icon in a drawing showing how to use a washing machine), something else with industrial application (washing clothes) and something else within statutory subject matter (a washing machine) to claim the combination (a known washing machine with a clever drawing showing by means of new icons how to use it to wash clothes). The requirements must all apply to the same teaching (invention).
The technical contribution is the invention, and it must pass the four tests: invention character (statutory subject matter), novelty, non-obviousness (= inventive step) and industrial applicability. The claimed object may (and usually will) include other features which do not pass the tests, along with the invention itself, but this should not be taken as a excuse to claim objects which have nothing in them that passes all the four tests, only different things, each passing different tests. Otherwise, any program for computers could be claimed by claiming any computer (technical but not new) with the program (non-technical but new).
The CEC proposal eliminates one of the 4 tests, that of "technical invention", and instead says that this test should be part of the non-obviousness test. This is not a harmonisation but a change to the system of Art 52 EPC and Art 27 TRIPs. Many of the amendment proposals commit the same type of error. It is essential to identify one object in a patent application, and apply four different filters to it. Any provision which says that "the claim as a whole" needs to be tested or which makes one filter dependent on another weakens the patentability requirements of the EPC. This is also true of claims such as ITRE-6, which mixes various tests in an attempt to sound strict, but in doing so actually loosens the patentability criteria.
By mixing "technical contribution" and "inventive step", the CEC proposal creates systematic obscurity and legal insecurity. It opens an infinite ocean of interpretation for EPO and prevents most national patent offices (who do not examine non-obviousness) from rejecting patents for non-inventions. Due to this proposal, the European Commission itself had to admit in its FAQ about the directive proposal that it is unable to say whether "Amazon One Click Shopping" is patentable subject matter or not. Everything is made dependent on the EPO's "inventive step" analysis.
This would make publication of many programs a direct patent infringement, thus creating additional risks of litigation for programmers and Internet service providers.
Program claims also lead the patent system ad absurdum. Taken to the extreme of consistency, they mean that patent descriptions are patented: by publishing the full disclosure (which in case of software should contain some sample source code), the patent office would infringe on the program claim. This illustrates nicely why software cannot be patentable: patents are supposed to be deals between the patentee and the public, where information is disclosed and matter monopolised.
The "consumer-protection" argument in favor of program claims is groundless and cynical. It is always possible for the end user of commercial software to hold the distributor liable by means of standard contract clauses, and this is what would usually happen, if software is patentable without program claims.
The real reason why industrial patent lawyers are pushing for program claims seems to be a symbolic one: the existence of program claims brutally and indecently documents that the border to patenting software as such has been crossed. Conversely, by refusing to grant program claims, the European Commission can appear as moderate.
However, in order to protect the freedom of publication, as guaranteed by Art 10 ECHR, the mere refusal of an indecent claim form is not enough. A more explicit affirmation of the freedom of publication, such as ITRE-13, is needed. And ultimately, in another context, it must be made clear that information objects in whatever form are not patentable.
A great concern is that by creating a dominant proprietary standard, one software house may "lock in" the whole market, making it impossible for other programs to interoperate, and so impossible for them to compete.
As the Microsoft case made clear, anti-trust laws can take a very long time to operate, by which time the marketplace may have utterly changed.
EU copyright laws recognise this danger, and Directive 91/250/EEC, Articles 5(2) and (3) and 6, allow decompilation of a program to investigate its interfaces, although the decompiled source code may not be made public, and decompilation is permitted only if the information is not otherwise readily available.
The CEC article 6 (and various amendments that rewrite it) uphold this right of decompilation.
But this is of little help in achieving interoperability when interfaces are patented: interoperation would be possible only by securing a valid licence for the patent. Decompilation is a problem only in the context of copyright. Allowing it in the contexts of patents means allowing nothing.
So an amendment of fundamental importance is Amendment ITRE-15 (Article 6(a)), which would create a similar protection for interoperability in the face of patent rights.
[text of the original proposal of European Commission]
[This amendment was submitted by Toine Manders MEP and Bernt Doorn MEP]
[FFII have no recommendation.]
[MEP Arlene McCarthy recommends voting against.]
[MEP Toine Manders (ELDR) recommends voting in favor.]
[3 voted in favour, 25 against]
|Proposal for a Regulation of the European Parliament and of the Council on the patentability of computer-implemented inventions|
[text of amendment 21]
[Comment of FFII/Eurolinux]
|21||tmanders, bdoorn||o||-||+||3:22||Proposal for a Regulation of the European Parliament and of the Council on the patentability of computer-implemented inventions|
|22||tmanders||-||+||+||+?||The realisation of the internal market implies the elimination of restrictions to free circulation and of distortions in competition, while creating an environment which is favourable to innovation and investment. In this context the protection of inventions by means of patents is an essential element for the success of the internal market. Effective, transparent and harmonised protection of computer-implemented inventions throughout the Member States is essential in order to maintain and encourage investment in this field.|
|ITRE-1||+||-||+||22:7||Therefore, the legal rules governing the patentability of computer-implemented inventions should be harmonised 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.|
|1||amccarthy||-||+||+||+?||Therefore, the legal rules as interpreted by Member States' courts should be harmonised and the law governing the patentability of computer-implemented inventions should be made transparent. The resulting legal certainty should enable enterprises to derive the maximum advantage from patents for computer-implemented inventions and provide an incentive for investment and innovation. 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.|
|23||egebhardt||+||-||+||11:20||Under the Convention on the Grant of European Patents signed in Munich on 5 October 1973 and the patent laws of the Member States, programs for computers together with discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, and presentations of information are expressly not regarded as inventions and are therefore excluded from patentability. This exception also applies if the matter referred to is implemented in computer programs which are executed in computers and which do not make a technical contribution. Merely specifying technical means in the patent claims does not constitute a technical contribution.|
|24||lberenguer||+||-||+||22:8||(7a) The aim of this Directive is not to amend the European Patent Convention, but to prevent different interpretations of its provisions.|
|25||egebhardt||+||-||+||11:19||(7a) A computer program, and in particular the expression of a computer program in source code or object code or in any other form, does not, therefore, constitute a patentable invention. The manufacture, offering for sale or placing on the market of such a computer program, or the importation or possession thereof to those ends, cannot constitute an infringement of patent law.|
|ITRE-2||+||-||+||11:20||(7a) Parliament has repeatedly asked the European Patent Office to review its operating rules and for the Office to be publicly accountable in the exercise of its functions. In this connection it would be particularly desirable to reconsider the practice in which the Office sees fit to obtain payment for the patents that it grants, as this practice harms the public nature of the institution. In its resolution 1 on the decision by the European Patent Office with regard to patent No EP 695 351 granted on 8 December 1999, Parliament requested a review of the Office's operating rules to ensure that it was publicly accountable in the exercise of its functions. 1- OJ C 378, 29.12.2000, p. 95.|
|CULT-2||+||11:20||(7b) In its resolution (published in OJ C 378, 29.12.2000, p. 95) on a decision by the EPO with regard to patent No EP 695 351 granted on 8 December 1999, the European Parliament demanded a review of the EPO to ensure that it becomes publicly accountable in the exercise of its functions.|
|ITRE-3||+||-||+||11:20||While software plays an important role in a number of industries it is also a basic form of creativity and self-expression. Software is, in addition, a field of specialised engineering and a basic human activity, with more than 10 million professional developers throughout the world and tens of millions of people creating software for one purpose or another. Independent developers and small businesses play a fundamental role in innovation in this area. It follows that the means employed to boost investment in largely software-based industries should not lead to jeopardising the capacity of all concerned to become active creators and innovative users of software, and in particular that patents should not permit the monopolisation of tools for self-expression, creativity, and the dissemination and exchange of information and knowledge.|
|CULT-1||+||-||-||10:20||(7a) Software plays a key role in many industries and, moreover, is a fundamental means of creation and expression.|
|CULT-3||+||-||-||9:22||(7c) At the same time software is a specialised field of engineering and an important human activity, with more than 10 million professional software developers worldwide and tens of millions of people who develop software in one capacity or another.|
|CULT-4||+||-||-||9:22||(7d) An increasing amount of information and knowledge is intrinsically linked to the software through which it is created, expressed, disseminated and put to use.|
|CULT-5||+||-||-||9:22||(7e) Independent software developers and small businesses make a crucial contribution to innovation in this area.|
|CULT-6||+||-||-||9:22||(7f) This situation, in which there is a huge number of innovators and technology influences basic cultural activities, marks a completely new departure in the history of patents and requires specific precautions as to the manner in which patents are applied in this area.|
|CULT-7||+||-||-||9:22||(7g) It follows, therefore, that the means used to encourage investment in software- intensive industries ought not to serve to jeopardise the potential of anyone to become an active developer and innovative user of software.|
|CULT-8||+||-||-||9:21||(7h) In particular patents must not allow monopolies to be established over means of expression, creation, dissemination and exchange of information and knowledge.|
|CULT-9||+||-||-||9:21||(7i) The various software components or levels are highly interdependent and, therefore, the greatest possible care should be exercised in respect of the extent of the protection afforded by patents, in order to ensure that markets remain competitive and open.|
|26||mecherer, egebhardt, nmaccormick, lberenguer||++||-||+||11:20||Patents are temporary monopolies granted by the State to inventors in order to stimulate global technical progress. In order to ensure that the system works as intended, the conditions for granting patents and the modalities for enforcing them must be carefully designed. In particular, in order that inevitable corollaries of the patent system such as restriction of creative freedom, legal insecurity and anti-competitive effects be kept within reasonable limits.|
|27, ITRE-4||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||+||-||+||11:20||(deleted)|
|2||amccarthy||-||+||+||22:9||In order to be patentable, inventions in general and computer-implemented inventions in particular must be susceptible of industrial application, new and involve an inventive step. In order to involve an inventive step, computer-implemented inventions should make a technical contribution to the state of the art.|
|28||egebhardt||+||-||-||-||(11a) Computer-implemented inventions are only patentable if they may be considered to belong to a field of technology and, in addition, are new, involve an inventive step and are susceptible of industrial application.|
|31||egebhardt||++||-||-||-||Accordingly, a patentable computer-implemented invention should make a technical contribution to the state of the art, which is only the case if the contribution meets the criterion of having a technical character, i.e. teaches in one or more ways about cause-effect relationships when using controllable forces of nature. The extent of the protection provided by patent claims granted may, irrespective of further non-technical contributions and effects, only include this technical contribution. Patent claims should, in addition, be granted only if sufficient disclosure has been made of the computer-implemented invention.|
|29, 30||tmanders, bdoorn||+||-||+||-||(deleted)|
|3||amccarthy||--||+||+||21:9||(12) Accordingly, 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. When assessing whether an inventive step is involved, it is usual to apply the problem and solution approach in order to establish that there is a technical problem to be solved. If no technical problem is present, then the invention cannot be considered to make a technical contribution to the state of the art.|
|32||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||++||-||-||10:21||A defined procedure or sequence of actions, when performed with the help of an apparatus such as a computer, may contribute to our knowledge about the cause-effect relations of controllable forces of nature and thereby constitute a patentable invention. However, an algorithm or a computer program, regardless of whether the symbolic entities of which it is composed can be interpreted as referring to a physical environment or not, is inherently non-technical, and cannot therefore constitute a patentable invention.|
|33||egebhardt||++||-||-||-||Computer-implemented rules of organisation and calculation (mathematical methods, algorithms, schemes, rules and methods for performing mental acts or doing business and programs for computers, etc) do not, pursuant to this directive, belong to the field of technology and are therefore not patentable. A method involving the use of rules of organisation or calculation may only be patentable subject to the additional condition that it makes a technical contribution to the state of the art.|
|4||amccarthy||o||+||+||24:7||However, 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.|
|5||amccarthy||+||+||+||+||(13b) If the contribution to the state of the art relates solely to unpatentable matter, there can be no patentable invention irrespective of how the matter is presented in the claims. For example, the requirement for technical contribution cannot be circumvented merely by specifying technical means in the patent claims.|
|6||amccarthy||-||+||+||18:2||Furthermore, 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 monopolise the algorithm itself or its use in contexts not foreseen in the patent.|
|COMP-4||jwuermeling||o||+||+||+||The scope of the exclusive rights conferred by any patent are defined by the claims. Computer-implemented inventions must be claimed with reference to either a product such as a programmed apparatus, or to a process carried out in such an apparatus. Accordingly, where individual elements of software are used in contexts which do not involve the realisation of any validly claimed product or process, such use will not constitute patent infringement.|
The amendment may have an indirect benefit: it seems to contradict amendment COMP-1 by saying that only programmed apparatusses and processes can be claimed.
|7||amccarthy||-||+||-||20:11||(14) The legal protection of computer-implemented inventions does not necessitate the creation of a separate body of law in place of the rules of national patent law. The rules of national patent law remain the essential basis for the legal protection of computer-implemented inventions. This Directive simply clarifies the present legal position having regard to the practices of the European Patent Office with a view to securing legal certainty, transparency, and clarity in the law and avoiding any drift towards the patentability of unpatentable methods, such as business methods.|
|34||lberenguer||+||-||-||9:21||The competitive position of European industry in relation to its major trading partners would be improved if the current differences in the legal protection of computer-implemented inventions were eliminated and the legal situation was transparent. However, the removal of these barriers may not entail the abandonment of basic principles of European patent law, such as the principle that only technical inventions and inventions with industrial application are patentable.|
|8||amccarthy||-||+||-||20:9||The competitive position of European industry in relation to its major trading partners will be improved if the current differences in the legal protection of computer-implemented inventions are eliminated and the legal situation is transparent. With the present trend for traditional manufacturing industry to shift their operations to low-cost economies outside the European Union, the importance of intellectual property protection and in particular patent protection is self-evident.|
Amendment 8 suggests that the directive is motivated by present-day external market policy considerations rather than by mere "harmonisation of the internal market". It presents software patents as a tool of protectionism. As far as this could work at all, it would protect companies from USA and Japan (who hold about 75% of the software patents already granted by the EPO) from competition by our otherwise competitive European software sector, including that of low-cost economies such as those of Poland, Portugal, Greece etc. Also, if programming work is exported, then patents will follow suit sooner rather than later, leaving Europe behind as a high-cost economy, characterised by a flourishing patent litigation sector.
Amendment 34 is more to the point. It stresses that the directive should take the aim of "harmonisation and clarification" seriously and not pursue other unstated goals (such as those insinuated in amendment 8) under a cover of "harmonisation and clarification".
|35||egebhardt||++||-||+||10:20||(16a) At the international level, Europe is ahead in the area of open, alternative development and licensing approaches to computer programs, e.g. open source projects under the "General Public License". Particularly in the light of increasing requirements for stability, interoperability and IT security of computer programs, open source computer programs developed on a common, ongoing and transparent basis are gaining in importance. In order to turn this European lead in terms of development into a real competitive advantage, the legal framework conditions for such alternative development and licensing approaches must continue to be able to be relied upon.|
|36||lberenguer||-||-||-||9:21||For an invention to have industrial character, it is necessary not only for the means used in its implementation to be predominantly industrial, but also for the result it produces to be industrial in character. The industrial character of an invention also implies that it contains no indication of human intellectual activity. In any case, as far as this Directive is concerned, when mention is made of the technical contribution, it should be understood that this refers to industrial technology.|
|9||amccarthy||o||+||+||22:6||This Directive should be without prejudice to the application of the competition rules, in particular Articles 81 and 82 of the Treaty.|
|10||amccarthy||o||(18) Acts permitted under Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular provisions thereof relating to decompilation and interoperability, should not be affected through the protection granted by patents for inventions within the scope of this Directive.|
|37,38||pkauppi, amccarthy||o||+||+||23:7||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. In particular, acts which, under Articles 5 and 6 of Directive 91/250/EEC, do not require authorisation 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 authorisation, shall not require authorisation of the rightholder with respect to the rightholder's patent rights in or pertaining to the computer program.|
|39||lberenguer||+||-||-||10:20||Acts permitted under Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular provisions thereof relating to decompilation and interoperability, or the provisions concerning semiconductor topographies or trade marks, shall not be affected through the protection granted by patents for inventions within the scope of this Directive. Under no circumstances should patent protection and copyright protection overlap.|
|40||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||++||-||-||7:19||This Directive lays down rules concerning the limits of patentability and patent enforcability with respect to computer programs.|
|11||amccarthy||--||+||-||8:19||(a) "invention" encompasses both patentable inventions and matter whose patentability has not been established or is in question;|
|41||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||+++||-||-||-||(a) "computer-implemented invention" means any technical solution the implementation of which involves the use of a computer, computer network or other programmable apparatus and having one or more prima facie novel or non-novel implementation features which are realised wholly or partly by means of a computer program or computer programs, whereas the prima facie novel solution features depend wholly or partly on the presence of peripheral hardware which uses forces of nature in an inventive way;|
|ITRE-5||+||-||+||+||(a) "computer-implemented invention" means any invention susceptible of industrial application the performance of which involves the use of a computer, computer network or other programmable apparatus and having one or more novel features which constitute a technical contribution, and other features whether novel or not, and have to be realised wholly or partly by means of a computer program or computer programs;|
|CULT-10||+||-||+||+||(a) "computer-implemented invention" means any technical solution the implementation of which involves the use of a computer, computer network or other programmable apparatus and having one or more prima facie novel features which are realised wholly or partly by means of a computer program or computer programs;|
|42||wrothley||--||-||1:25||(a) "computer-implemented invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus and which is realised wholly or partly by means of a computer program or computer programs;|
|12||amccarthy||--||+||-||18:8||(a) "computer-implemented invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus and having one or more features which are realised wholly or partly by means of a computer program or computer programs;|
|43||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||++||-||-||7:21||"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, that is, a new teaching on cause-effect relations in the use of controllable forces of nature.|
|CULT-11||++||-||-||-||(b) "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. 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.|
|ITRE-6||-||-||+||-||(b) "technical contribution" means a contribution, involving an inventive step to a technical field which solves an existing technical problem or extends the state of the art in a significant way to a person skilled in the art.|
|44||wrothley||o||-||-||-||(b) "technical contribution" means a contribution to the state of the art in a technical field.|
ITRE-6 seems to imply that only the problem but not the solution needs to be technical. The word "significant" is merely another indeterminate pious wish and therefore conducive to confusion rather than clarification.
|45||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||+++||-||-||7:20||"technical field" means an industrial application domain requiring the use of controllable forces of nature to achieve predictable results. "Technical" means "belonging to a technical field". The use of forces of nature to control physical effects beyond the numerical representation of information belongs to a technical domain. The production, handling, processing, distribution and presentation of information do not belong to a technical field, even when technical devices are employed for such purposes.|
|46||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||++++||-||-||-||Member States shall ensure that data processing is not considered to be a field of technology in the sense of patent law, and that innovations in the field of data processing are not inventions in the sense of patent law, regardless of whether they are executed in the human mind or by means of technical devices.|
|13, ITRE-7, CULT-12||amccarthy||+||+||+||28:1||(deleted)|
|47||bdoorn||+||-||+||In order to be patentable, a computer-implemented invention must be susceptible of industrial application, be new, involve an inventive step and make a technical contribution.|
|14||amccarthy||-||+||+||20:10||Amendment 14 is analysed as parts 14(1), 14(2) and 14(3) below|
|48||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||++||-||+||-?||Member States shall ensure that patents are granted only for technical inventions which are new, non-obvious and susceptible of industrial application.|
|ITRE-8||o||-||+||-||1. Member States shall ensure that a computer-implemented invention is patentable only on the condition that it makes a technical contribution as defined in Article 2(b).|
|CULT-13||o||-||-||-||1. Member States shall ensure that a computer-implemented invention is patentable on the condition that it is susceptible of industrial application, is new, non-obvious, involves an inventive step, and belongs to a technical field.|
|14(1)||amccarthy||-||+||+||+||In order to be patentable, a computer- implemented invention must be susceptible of industrial application and new and involve an inventive step. In order to involve an inventive step, a computer-implemented invention must make a technical contribution. The technical contribution shall be assessed by considering the state of the art and the scope of the patent claim considered as a whole, which must comprise technical features, irrespective whether or not such features are accompanied by non-technical features.|
|49||lberenguer||o||-||-||-||Member States shall ensure that a computer-implemented invention is not patentable `per se', but only insofar as it is susceptible of industrial application, is new, and involves an inventive step and a technical contribution.|
|51||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||-||-||++||Member States shall ensure that it is a condition of involving an inventive step that a computer-implemented invention must make a technical contribution, that is, provide new problem solutions consisting in teachings about new cause-effect-relations in the use of controllable forces of nature, which are not obvious to a person skilled in the art.|
|CULT-14||++||-||-||-||Member States shall ensure that it is a condition of involving an inventive step that a computer-implemented invention must make a technical contribution, that is to say, it must impart a new lesson in the relationships of cause and effect involved in the controlled use of natural forces.|
|14(2)||amccarthy||o||+||+||+||In order to involve an inventive step, a computer-implemented invention must make a technical contribution.|
|COMP-6||amccarthy||o||-||-||20:10||Les États membres veillent à ce que le fait qu'une invention mise en oeuvre par ordinateur apporte une contribution technique constitue une condition nécessaire à l'existence d'une activité inventive.|
|ITRE-9||+||+||-||deleted [included in 4.1]|
|50||wrothley||(Does not affect English version. Of linguistic nature, not voted)|
|52||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||++||-||+||-||The technical contribution shall be assessed by consideration of the difference between all of the the technical features of the patent claim and the state of the art.|
|CULT-15||+||-||+||-||3. The technical contribution shall be assessed by consideration of the difference between the scope of the technical features of the patent claim considered as a whole and the state of the art.|
|53||wrothley||o||-||The technical contribution shall be assessed on the basis of the scope of the patent claim considered as a whole, elements of which may comprise both technical and non-technical features.|
|14(3)||amccarthy||-||+||+||+||In order to be patentable, a computer-implemented invention must be susceptible of industrial application and new and involve an inventive step. In order to involve an inventive step, a computer-implemented invention must make a technical contribution. The technical contribution shall be assessed by considering the state of the art and the scope of the patent claim considered as a whole, which must comprise technical features, irrespective whether or not such features are accompanied by non-technical features.|
|ITRE-10||-||-||+||-||3. The significant extent of the technical contribution shall be assessed by consideration of the difference between the technical elements included in the scope of the patent claim considered as a whole and the state of the art. Elements disclosed by the applicant for a patent over a period of six months before the date of the application shall not be considered to be part of the state of the art when assessing that particular claim.|
The novelty grace period proposed by ITRE is an orthogonal question. As shown by a recent consultation conducted by the UK Patent Office, it is very controversial even among those who are supposed to benefit from it. It is not clear whether a novelty grace period would in fact, as suggested by the ITRE report, benefit SMEs. In the case of open source development, it could even cause additional insecurity as to whether published ideas are free from patents.
|54||egebhardt||+||-||-||-||Member States shall ensure that patent claims to a computer-implemented invention are granted only if there is full disclosure of the invention. Full disclosure includes the publication of the computer programs used for the purpose of implementation in source code, including comments.|
|ITRE-11||++||-||+||-||3a. 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, or other apparatus. Accordingly, inventions involving computer programs which implement business, mathematical or other methods, which inventions do not produce any technical effects beyond the manipulation and representation of information within computer-system or network, shall not be patentable. (McCarthy prevented voting of this amendment by making it dependent on previous refusal of her amendment 14.)
|55||egebhardt||+||-||+||-||Exclusions from patentability
|15||amccarthy||o||+||+||22:8||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 which implement 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.
|56||lberenguer||-||-||-||9:21||For the purposes of the previous article, the following conditions must be met in order for computer-implemented inventions to be patentable:
In any event, the patent holder must keep the market adequately supplied with the result of the patented invention.
|59||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||++||-||-||-||Member States shall ensure that a computer-implemented invention may be claimed only as a product, that is a set of equipment comprising both programmable apparatus and devices which use forces of nature in an inventive way, or as a technical production process operated by such a computer, computer network or apparatus through the execution of software.|
|ITRE-12||+||-||+||-||(a) 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.|
|CULT-16||+||-||-||-||Member States shall ensure that the forms of claims in respect of a computer-implemented invention may be made only to the effect that the invention is a product, that is a programmed computer, a programmed computer network or other programmed apparatus, or a technical production process controlled by such a computer, computer network or apparatus through the execution of software.|
|COMP-1 > (58, 60, 61, 62, 64)||maberger, wlangen, mharbour, jfourtou, aschaffner, wbeysen, wdeclercq||-||+||+||21:9?|
|65||egebhardt||+||-||-||-||Member States shall ensure that patent claims granted in respect of computer-implemented 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.|
Amendment 65 forbids program claims and thereby makes explicit what the CEC version only says implicitely. It has formal flaws which would have to be corrected later, e.g.
|ITRE-13||++||-||+||-||Member States shall ensure that the production, handling, processing, distribution and publication of information, in whatever form, can never constitute direct or indirect infringement of a patent, even when a technical apparatus is used for that purpose. (McCarthy prevented voting of this amendment by making it dependent on adoption of ITRE-12.)|
|63||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||++||-||+||11:19||Member States shall ensure that the production, handling, processing, diffusion and presentation of information in whatever form can never constitute a direct or indirect patent infringement, even when technical devices are used for that purpose.|
|CULT-17||+||-||+||-||Member States shall ensure that the processing, handling, dissemination, and presentation of information in whatever form do not constitute a direct or indirect patent infringement.|
|CULT-18||+||-||+||-||Member States shall ensure that the use of a computer program for purposes not requiring the use of the technical contributions claimed in the patent does not constitute a direct or indirect patent infringement.|
|ITRE-14(1)||+||-||+||-||(c) Member States shall ensure that the use of a computer program for purposes that do not belong to the scope of the patent cannot constitute a direct or indirect patent infringement. (Not put to vote, because Arlene McCarthy made it dependent on non-adoption of COMP-1)|
|ITRE-14(2)||+||-||+||-||(d) Member States shall ensure that whenever a patent claim names features that imply the use of a computer program, a well-functioning and well documented reference implementation of such a program is published as part of the patent description without any restricting licensing terms. (Not put to vote, because Arlene McCarthy made it dependent on non-adoption of COMP-1.)|
|CULT-19||+||-||+||-||Member States shall ensure that whenever a patent claim mentions features entailing the use of a computer program, an operational and well-documented reference run of that program is published as part of the patent description without any restricting licensing terms.|
|68||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||+++||-||-||-||Member States should ensure that the domains of copyright and patent protection do not overlap. Property in computer programs is acquired and regulated through copyright. Property in technical inventions is acquired and regulated through patents. Aspects of a computer program that cannot be appropriated through copyright cannot be appropriated through patents, utility certificates nor any other property regime. Consequently, acts permitted under Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular provisions thereof relating to decompilation and interoperability, or the provisions concerning semiconductor topographies or trade marks, shall not be affected by this Directive.|
|ITRE-15, CULT-21||+++||-||+||+||(a) Member States shall ensure that 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.|
|16||amccarthy||o||6. Acts permitted as exceptions under Articles 5 and 6 of Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular provisions thereof relating to decompilation and interoperability, shall not be affected through the protection granted by patents for inventions within the scope of this Directive.|
|CULT-20||o||-||-||-||The rights conferred by patents granted for inventions within the scope of this Directive shall be without prejudice to acts permitted by way of exception under Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular the acts specified and described in the closed list set out in Articles 5(2) and (3) and 6 of Directive 91/250/EEC.|
|66,67||amccarthy, pkauppi||o||+||+||+||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.|
|69||lberenguer||+||-||-||8:22||The Member States shall ensure that computer-implemented inventions that meet the conditions laid down in this Directive do not benefit from protection by both patent and copyright.|
|17||amccarthy||o||+||+||30:0||The Commission shall monitor the impact of 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.|
|ITRE-16||o||+||+||+||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, including electronic commerce.|
|70||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||-||-||+||10:19||The European Parliament shall form a permanent committee on the criteria of patentability. This investigation committe shall be empowerered to take appropriate means to obtain any needed information from the European Patent Office, the European Commission and important industry players. The European Community retains the freedom to adopt a stricter interpretation of concepts such as "invention", "technical character", "inventivity" and "industrial application" any time later and to apply this stricter interpretation retroactively to patents which were granted under looser interpretations when this is found to be in the public interest.|
|COMP-5||o||+||+||25:5||In the light of the monitoring carried out pursuant to Article 7 and the report to be drawn up pursuant to Article 8, the Commission shall review the impact of this Directive and, where necessary, submit proposals for amending legislation to the European Parliament and the Council.|
|71, ITRE-17, CULT-22||mecherer, egebhardt, nmaccormick, lberenguer, ischroeder||+||-||+||11:19||Whether the powers delegated to the EPO are compatible with requirements for harmonisation of the EU legislation, together with the principles of transparency and accountability.|
|18||o||+||+||27:2||(d) whether difficulties have been experienced in respect of the relationship between the protection by patents of computer-implemented inventions and the protection by copyright of computer programs as provided for in Directive 91/250/EC and whether any abuse of the patent system has occurred in relation to computer-implemented inventions;|
|ITRE-18||o||-||+||+||(ca) any difficulties that have arisen with the relationship between protection by means of patents on computer-implemented inventions and the protection of computer programs by means of copyright law, as laid down in Directive 91/250/EEC.|
|19||amccarthy||o||+||+||26:3||(e) whether it would be desirable and legally possible having regard to the Community's international obligations to introduce a "grace period" in respect of elements of a patent application for any type of invention disclosed prior to the date of the application.|
|COMP-2||amccarthy||-||+||+||25:2||(f) in what respects it may be necessary to prepare for a diplomatic conference to revise the European Patent Convention, also in the light of the advent of the Community patent;|
|COMP-3||amccarthy||o||+||+||25:2||(g) on how the requirements of this Directive have been taken into account in the practice of the European Patent Office and in its examination guidelines.|
|20||amccarthy||o||-||-||10:19||Member States shall bring into force the laws, regulations and administrative provisions necessary to comply with this Directive not later than eighteen months after its entry into force. They shall forthwith inform the Commission thereof.|
|72||tmanders||o||-||+||1:28||1. Calls on the Commission to withdraw the directive. For reasons of legal certainty, calls on Member States which are contracting states to the European Patent Convention to examine the possibility of including the patentability of computer-implemented inventions in Article 52 of the European Patent Convention.|
|73||tmanders||o||-||+||8:21||For reasons of legal certainty, calls on Member States which are also contracting states to the European Patent Convention to ensure that practice with regard to the granting of patents pursuant to the European Patent Convention is brought into conformity with the provisions of this directive.|
|74||tmanders||o||-||+||7:23||1b. Calls on the Commission to put forward, within two years, concrete proposals for establishing a Community patent. Calls on the Member States to withdraw from the European Patent Convention following the introduction of such Community legislation.|
Legislation forming part of Community law, in respect of which the Court of Justice has jurisdiction and over which the democratically elected Parliament has control, is to be preferred. In view of the consequences of patents for the economy and society, it is important that such matters fall within the competence, and are subject to the control, of a democratically elected Parliament.However in the context of the current software patentability directive, this motion could be construed as directed against Art 52 EPC. It would have been more helpful if Amendment 74 had called on the EU and its member states to enforce the existing and perfectly clear and harmonised rules of Art 52ff EPC (substantive patent law), while solving the problems of concurring legal structures (EPC vs EU) by some other means, such as replacing the EPC with a similar EU-based version.