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EU Software Patent Directive Amendment Proposals

The European Commission proposed on 2002-02-20 to consider computer programs as patentable inventions and make it very difficult not to grant a patent on an algorithm or a business method that is claimed with the typical features of a computer program (e.g. operation of computer with "storage means", "output means" etc). We have worked out a counter-proposal that upholds the freedom of computer-aided reasoning, calculating, organising and formulating and the copyright property of software authors while supporting the patentability of technical inventions (problem solutions involving forces of nature) according to the differentiations explained in the European Patent Convention (EPC), the TRIPs treaty and the classical patent law literature. This counter-proposal is receiving support from numerous prominent players in the fields of software, economics, politics and law.
  1. Rationale
  2. Preamble
  3. The Articles
  4. Annotated Links

1. Rationale

  1. Why a directive?
  2. Core Layer: Fence in the Technical Invention, Reaffirm Art 52 EPC
  3. Extension Layer: Some Clarifications on enforcability of patents in the context of information goods
  4. Completion Layer: Define the "Technical Invention", limit the scope of judiciary rule-setting

1. Why a directive?

  1. Harmonising a unified system?
  2. Clarifying the Unspeakable?
  3. The political deal between EU and EPO
  4. Valid Reasons for a Directive

1. Harmonising a unified system?

The European Commission has proposed a directive for the "patentability of computer-implemented inventions", colloquially termed "software patent directive".

The stated aim of the directive is to "harmonise" and "clarify" the rules of what is patentable and what not in the field of computer-related products and proceses.

Europe's patentability rules were unified by the European Patent Convention of 1973. In cases of distortions of the internal market, the European Court of Justice is entitled to decide, no matter whether the substantial patent law which it cites is EU law or the EPC. Moreover, preparations are under way for a centralised EU Patent Court in Luxemburg, which again would be empowerd to decide on the basis of the EPC as well as of EU directives. So what could possibly still be left for a EU directive to harmonise?

2. Clarifying the Unspeakable?

If there is nothing to harmonise, couldn't there at least be something to clarify? Sure, there must be. Laws usually leave some questions open for interpretation. Patent law in particular has large gray zones in which rules have been set by judges. Regulating patentability would be a thorny political task. Some even say that clarification beyond Art 52 EPC is infeasible[1].

Rather than narrowing the gray zones, the EU Comission proposes to further enlarge them. Everything is made dependent on undefined terms such as "technical character", and even on self-contradictory arrangments of this empty word, such as saying that a "technical contribution" may consist solely of untechnical features (article 4), or that it is implied in non-obviousness (articles 1-4). Between the lines this directive proposal seems to say:

Member states shall ensure that national courts may not revoke any patents based on what they consider to be a consistent interpretation of the written law but only based on the authority of European judicial institutions such as the European Patent Office.

It would be have been much clearer if it could have been reduced to this one sentence.

3. The political deal between EU and EPO

So, if there is nothing to harmonise and nothing to clarify, why are EU politicians almost unanimously pushing for a directive?

One answer could be that EU politicians are naturally in favor of anything that extends EU influence. But that is not the whole answer.

Europe's substantive patent law is currently not regulated by the EU but by the European Patent Organisation (EPO), an intergovernmental organisation which runs the European Patent Office (EPO) and is associated with the EU (e.g. EPO membership is precondition for EU membership) . There has however been a movement to transfer power from the EPO to the EU. This power transfer has been based on win-win deals, such as an increased influence of the EPO at the European Commission. The software patent directive is such a win-win deal: the EPO receives a license to grant software patents, while the EU is allowed to extend its legislative competence in patent matters.

When the EU extends its competence, it usually cites the EC Treaty. The most convenient pretext is "harmonisation": somewhere in Europe there must be some remaining traces of national diversity which can be said to "impede the proper functioning of the internal market". However, this harmonisation trick does not always work, as can be seen from some recent unsuccessful clashes of the European Commission with national governments (e.g. over the tobacco advertisement directive) before the European Court of Justice.

4. Valid Reasons for a Directive

There are good reasons for the EU to legislate on matters of patentability:
  1. Restrictions on the use of ideas affect basic liberties and can have a great impact on propsperity. Unlike many detail questions of patent law, the basic rules concerning what is patentable need to be decided by an elected parliament.
  2. With the introduction of the community patent, the patent system has become a domain of EU legislation. Without clear and strict patentability rules, a more efficient patent system can mean more efficient infliction of harm on European industry and citizens.
  3. Rule-setting power on questions of material patent law is currently is already europeanised. There is a pattern of informal legislation by the European Patent Office and its Administrative Council, both of which are not elected legislative organs.
  4. The European Patent Office has set new rules of patentability which are at odds with the existing written laws and which are followed by some but not all national courts. The question of what is patentable is governed by two competing sets of rules and the role of an arbiter between these two is most naturally fulfilled by the European Parliament.
  5. A few questions concerning enforcability of patents are currently still in the domain of national law and there is indeed some divergence. Strangely enough, the European Commission has shown little interest in addressing these divergences so far, although the questions are not less capble of "impeding the proper functioning of the internal market".

With some effort, this reasoning should be able to serve as a valid justification for passing a EU directive. We have tried to word our preamble amendment proposals accordingly.

2. Core Layer: Fence in the Technical Invention, Reaffirm Art 52 EPC

  1. Negative Definition of "Technical Invention" in Art 52 EPC
  2. Translating from EPC language to TRIPs language
  3. Translating from EPC language to the Meta-Language of Claim-Writing
  4. A well-fenced gray zone
  5. No such thing as a "Computer-Implemented Invention"

1. Negative Definition of "Technical Invention" in Art 52 EPC

The basic choice to be made is whether we adopt the rules of Art 52 EPC, as reflected in the Examination Guidelines of 1978 and most of the EPO caselaw of the 1970-80s and patent law textbooks such as Kraßer 1986 and Benkard 1988, or the more "liberal" patentability rules developped by the EPO step by step after the publication of the revised Examination Guidelines of 1985.

Since the later EPO caselaw deviates from the EPC in various respects, there is, even from a purely legal point of view, no choice but to opt for the EPC. Otherwise the directive would in fact change the law, rather than "harmonise the status quo", and it might not stand up to a challenge before the European Court of Justice (ECJ).

We propose to opt for the original Art 52 EPC (negative definition of technical invention) and to restate it som more contexts, so that it is less likely to be misunderstood. Recent patent language is characterised by new elements such as the TRIPs treaty, which didn't exist in 1973, when the EPC was decided. Although Art 52 EPC provides a clear and adequate structure for today's patent system and is perfectly compatible with TRIPs, it has been weakened by recent layers of interpretation, many of which aimed at creating a different legal structure.

At the same time, we propose to correct some misconceptions of the EPO jurisdiction which are not compatible with Art 52 EPC. These include

  1. The term "invention" must be used only in the sense of "patentable invention": a synonym of "technical invention", "technical contribution", "technical solution" or "technical teaching". It is in particular not permissible to use the term "invention" to refer to non-technical ideas or to features in the claim wording which are not meant to be subjected to the tests of novelty, non-obviousness and industrial applicability.
  2. The four tests of "technical invention", "novelty", "non-obviousness" and "industrial applicability" must be kept separate and strengthened each on its own terms. It is in particular not permissible to mingle the "technical invention" test into the "inventive step" (= non-obviousness) test, as the EPO and the CEC proposal have been doing.

2. Translating from EPC language to TRIPs language

We propose to translate Art 52 EPC into the terminology of Art 27 TRIPs by means of the following statements:

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 considered to be inventions in the sense of patent law.

A similar provision was adopted and voted favorably by the European Parliament's Culture commission (CULT-16).

3. Translating from EPC language to the Meta-Language of Claim-Writing

Moreover, in our amendment to Article 5, we propose to translate the rule into the context of patent claim writing:

Member States shall ensure that a computerised invention may be claimed as a product, that is a set of devices connected to a data processing system, or as a process carried out by such devices.

4. A well-fenced gray zone

The exclusion of general-purpose data processing leaves room for the courts and patent offices to grant patents on computer-controlled machine tools or anti-blocking systems, even when the novel teaching arguably lies in the realm of logics or mathematics. Just as in Art 52 EPC, we merely exclude certain classes of objects and do not specify that the rest must be patentable. There is nothing in this rule that could encourage lawcourts to grant patents on applied mathematics. Our core proposal does not exhaustively define the technical invention. Rather, it sets a clear and concrete boundary to the extension of the scope of patentability: programs for the general purpose computer are off limits, and so is the application of computers to business models, social processes and other phenomena that are unrelated to controlling forces of nature.

Such a regulation thus would clarify some important points, and it corresponds to a wide consensus of politicians, economists, engineers, programmers and patent experts[2] (in particular judges and examiners, less so attorneys).

5. No such thing as a "Computer-Implemented Invention"

It is clear from the above why the term computer-implemented invention is misleading. An idea that can be implemented merely by means of a general-purpose computer cannot be an invention in the sense of patent law. Rather, it is an algorithm expressed in terms of a mathematical model called Von Neumann Machine. In the language of Art 52 EPC, it is a "program for computers" or a "program for data processing equipment"[3] in the narrowest sense, and it will usually also fall into the categories of "mathematical methods" or "plans and rules for performing mental activity", all of which are not considered to be technical inventions.

If a term like "computer-implemented invention" really has to be used, we recommend renaming it to "computer-related invention" and incorporating a proper definition in the directive, similar to the one which we propose below.

3. Extension Layer: Some Clarifications on enforcability of patents in the context of information goods

The ITRE vote has shown that it is possible to obtain consensus for regulations on a series of questions which have arisen out of recent practise, such as:
  1. limits of patent enforcability and claim form in view regard to information freedoms such as the freedom of publication guaranteed by Art 10 ECHR or the freedom to use one's copyrighted intellectual property
  2. limits of patent enforcability in view of interoperability
  3. limits of patent enforcability in view of prior use in the case of information objects (i.e. "use" means "dissemination" and can therefore not easily be limited in scope)
  4. what constitutes published prior art in the case of information objects
  5. obligation to disclose a workable program in the description wherever a claim refers to a program
  6. measures for regular monitoring of the scope of patentability and control of the patent system
  7. safeguards to ensure that patents can be revoked when the Parliament later finds that a stricter approach to the technical invention is needed.

These questions are largely in the sphere of national legislation until today. They have not been regulated by theprovisions in Art 52-57 EPC (substantive patent law). Thus EU intervention in this sphere is both feasible and conveniently justifiable.

4. Completion Layer: Define the "Technical Invention", limit the scope of judiciary rule-setting

The existence of gray zones may be inevitable. Yet currently various EU proposals have made ambitious promises of wanting to eliminate gray zones. Such promises were apparently needed in order to extend the EU's regulative competence into the area of patentability.

Yet it may indeed be a good idea to get serious about eliminating gray zones. That would however involve far more of an effort than what the EU seems to be ready to do at the moment. It would be an ambitious project, involving a deepened discussion among concerned circles. It would probably have to rely on three pillars:

  1. Abstract Definition of Technical Invention
  2. Categorial exclusions
  3. Application Examples

1. Abstract Definition of Technical Invention

This is rooted in most european patent traditions and has found one of its most famous and most elaborate expression in the German Federal Court's Dispositionsprogramm decision of 1976. It relies on two essential distinctions:

  1. The invention which a claim discloses vs the scope of implementations which it forbids
  2. Mind vs Matter
1. the invention which a claim discloses vs the scope of implementations which it forbids
The invention must be new and technical, independently of how it is implemented. When software-patent advocates speak about a "computer-implemented invention", they are usually not referring to inventions but to scopes of forbidden implementations. By such a shift of underlying meaning, any restriction on patentability can be made meaningless.

Synonyms for invention are technical contribution, technical teaching or technical solution. Inventions are implicitely technical. It is dogmatically wrong to distinguish between invention and technical contribution as done in the CEC/BSA proposal. When CEC/BSA speaks of "invention", they mean "idea".

2. Mind vs Matter
Inventing in the sense of patent law means harnessing the forces of nature, which do not follow the rules of intellectual creation and must be verified by experimentation (letting nature answer questions) rather than by mathematical proof (letting the human mind answer). Only in this field can there be a macro-economid justification for granting a 20 year monopoly on a novel teaching.

Art 27 TRIPs determines that patentability must be limited by reference to the concepts of "invention", "technical" and "industrial". Even those who have difficulty with these concepts are forced to use them. Failing to define and apply them in a meaningful way may be construed as a violation of TRIPs.

see Patent Jurisprudence on a Slippery Slope -- the price for dismantling the concept of technical invention

2. Categorial exclusions

These are more concrete and therefore more mass-communicatable than the above-explained basic distinctions.

In EPC language:
Programs for computers are not inventions[4]
In TRIPs language:
Data processing is not a field of technology[5]

These first two pillars have in the past been weakened by progressive erosion. They need further support from a third, even more concrete pillar.

3. Application Examples

The directive should contain an annex with examples of model decisions, comprising both real cases from the earlier national caselaw and constructed cases.

The CEC/BSA proposal quotes recent EPO decisions as models. An amendement proposal should be accompanied by a preamble and an annex which quotes extracts from a few model cases. These should contain a description of prior art, an alleged invention and examples of possible claims and how they would be judged (refuted or upheld).

The annex with examples could be regularly reviewed by the European Parliament. Thus the Legislative could take charge of an important area of rule-setting competences which has been in the hands of judges for too long.

This again presupposes that the directive acknowledges the existence of a gray area in which the validity of existing patents is even less to be "taken for granted" than elsewhere.

see Patentability Legislation Benchmarking Test Suite

2. Preamble

amendment
Proposal for a
DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL
on the patentability of computer-implemented inventions		Proposal for a
DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL
on the limits of patentability
with respect to automated data processing and its fields of application
justification
The term "computer-implemented invention" is not used by computer professionals. It is in fact not in wide use at all. It was introduced by the European Patent Office (EPO) in May 2000 in Appendix 6 of the Trilateral Conference, where it served to legitimate business method patents, so as to bring EPO practise in line with the USA and Japan. Much of the European Commission's directive proposal is based on wordings from this "Appendix 6". The term "computer-implemented invention" is a programmatic statement. It implies that calculation rules framed in the terms of the general-purpose computer are patentable inventions. This implication is in contradiction with Art 52 EPC, according to which algorithms, business methods and programs for computers are not inventions in the sense of patent law. It can not be the aim of the current directive to declare all kinds of "computer-implemented" ideas to be patentable inventions. Rather the aim is to clarify the limits of patentability with regard to automatic data processing and its various (technical and non-technical) fields of application, and this must be expressed in the title in plain and unambiguous wording.

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community, and in particular Article 95 thereof,

Having regard to the proposal from the Commission39,

Having regard to the opinion of the Economic and Social Committee40,

Acting in accordance with the procedure laid down in Article 251 of the Treaty41,

Whereas:

  1. [Recital 1: Internal Market]
  2. [Recital 2: Differences]
  3. [Recital 3: No Convergence without Directive]
  4. [Recital 4: Significance of Computer Programs Today]
  5. [Recital 5: Ergo Harmonisation & Clarification]
  6. [Recital 6: TRIPs]
  7. [Recital 7: EPC]
  8. [Recital 8: Patents and Public Interest]
  9. [Recital 9: Patents and Copyright]
  10. [Recital 10: Technical Character]
  11. [Recital 11: Field of Technology]
  12. [Recital 12: Technical Contribution]
  13. [Recital 13: Algorithms]
  14. [Recital 14: EU Law vs National Law]
  15. [Recital 15: Scope of Regulation]
  16. [Recital 16: Competitivity]
  17. [Recital 17: Competition Rules]
  18. [Recital 18: Interoperability]
  19. [Recital 19: Subsidiarity]

1. [Recital 1: Internal Market]

amendment
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 and harmonised protection of computer-implemented inventions throughout the Member States is essential in order to maintain and encourage investment in this field.The realisation of the internal market requires 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 clarity in the scope of exclusion offered by patents and copyright is an essential element for the success of the internal market. Effective and harmonised protection of investments in software development is an important element for the success of the internal market.
justification
There is no evidence to support the Commission's suggestion that patents promote innovation in the field of software. Various economic studies suggest the contrary. The commission's proposal overstresses the importance of individual ideas and neglects other important factors of the software economy.

2. [Recital 2: Differences]

amendment
Differences exist in the legal protection of computer-implemented inventions offered by the administrative practices and the case law of the different Member States. Such differences could create barriers to trade and hence impede the proper functioning of the internal market.Differences exist in the legal protection of computer-implemented inventions offered by the administrative practices and the case law of the different Member States. Such differences could create barriers to trade and hence impede the proper functioning of the internal market.
justification
We avoid biased terms such as "protection" and "computer-implemented invention". Whether the objects in question here are "inventions" in the sense of the patent system is subject to regulation by this directive. The dispute is not about computing equipment but about software, and it is unclear in what way patents offer "protection" to software. Many software developpers are in fact asking the legislator to "protect" them against patents.

3. [Recital 3: No Convergence without Directive]

amendment
Such differences have developed and could become greater as Member States adopt new and different administrative practices, or where national case law interpreting the current legislation evolves differently.Due to a series of major changes of patentability rules at the EPO after the revision of the Examination Guidelines in 1985, European courts are now faced with two competing sets of rules. This situation calls for a legislative decision.
justification
We need to explain why the divergence (schism) can be expected to become wider. An abstract possibility of caselaw divergence always exists and can therefore not justify legislative action by the EU. Given that Europe's susbstantive patent law is already unified, a uniform development of national caselaw could normally be expected to occur. If we do not expect it to occur, we must explain why.

4. [Recital 4: Significance of Computer Programs Today]

amendment
The steady increase in the distribution and use of computer programs in all fields of technology and in their world-wide distribution via the Internet is a critical factor in technological innovation. It is therefore necessary to ensure that an optimum environment exists for developers and users of computer programs in the Community.Ever since the introduction of the universal computer in the 1950s and 60s, computer programs have been ubiquitously used to describe, control and integrate processes in all fields of human and social activity. It is therefore necessary to ensure that an optimum environment exists for developers and users of computer programs in the Community.
justification
The Commission text does not explain in what way computer programs are "critical" today, and it suggests a relation between a postulated "increase" in use of computer programs and a need for legislation, without clearly saying in what this relation consists. Moreover, it suggests that computer programs are somehow linked to "fields of technology", implying the conclusion of the Commission's Article 3, namely that computer programs are patentable inventions according to Art 27 TRIPs, even when they are about mathematics, bank transactions or administrative processes.

5. [Recital 5: Ergo Harmonisation & Clarification]

amendment
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.Therefore, the legal rules on the limits of patentability as laid down in Art 52 EPC should be reconfirmed and made more explicit. The resulting legal certainty should be conducive to innovation and investment in the area of software.
justification
Experience and economic studies strongly suggest that patents on computer-implemented rules of organisation and calculation (programs for computers), as have been granted by the European Patent Office (EPO) in contradiction to the letter and spirit of the EPC, are not conducive to innovation in the area of software. A recent study (http://www.researchoninnovation.org/swpat.pdf) shows that the same patents have substituted innovation and thus led to a reduction in R&D investment and productivity even those companies that patented most. Reconfirming the invalidity of these patents would reestablish legal security and confidence in investing in software development.

6. [Recital 6: TRIPs]

amendment
The Community and its Member States are bound by the Agreement on trade-related aspects of intellectual property rights (TRIPS), approved by Council Decision 94/800/CEC 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 (1986-199442). 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.The Community and its Member States are bound by the Agreement on trade-related aspects of intellectual property rights (TRIPs), approved by Council Decision 94/800/CEC 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 (1986-199442). 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 susceptible to industrial application. Moreover, according to TRIPS, patent rights should be available without discrimination as to the field of technology. This means that patentability must be effectively limited in terms of general concepts such as "invention", "technology" and "industry", so as to avoid both unsystematic exceptions and unoverseeable extensions, both of which would act as barriers to free trade. Thus inventions in all fields of applied natural science are patentable, whereas innovations in fields such as mathematics, data processing and organisational logic, are not patentable, regardless of whether a computer is used for their implementation or not.
justification
We need to make clear that there are limits as to what can be subsumed under "fields of technology" according to Art 27 TRIPs and that this article is not designed to mandate unlimited patentability but rather to avoid frictions in free trade, which can be caused by undue exceptions as well as by undue extensions to patentability. This interpretation of TRIPs is indirectly confirmed by recent lobbying of the US government against Art 27 TRIPS on the account that it excludes business method patents, which the US government wants to mandeate by the new Substantive Patent Law Treaty draft, see Software Patents and IPR Evangelism in the USA.

7. [Recital 7: EPC]

amendment
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, however, applies and is justified only to the extent that a patent application or patent relates to such subject-matter or activities as such, because the said subject-matter and activities as such do not belong to a field of technology.Under the European Patent Convention (EPC) 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 exclusion applies and is justified only to the extent that a patent application relates to such subject-matter or activities as such. Thus it might not apply if the disclosed invention does not reside in the computer program as such but in a physical engineering process which is carried out under program control. In this case the program itself would be freely implementable and usable on a data processing system for simulation, but the physical engineering process would fall under the patent.
justification
According to the normal rules of semantics, "program as such" can only mean "program as program", not "program as something non-technical". According to Art 52(2) EPC, programs for computers (calculation rules for general-purpose data processing equipment) are not technical inventions. Art 52 does not mention a delimiting criterion called "technical". The patent courts are however free to define their own (secondary) concept of "technical invention" as long as this concept conforms to the specifications of Art 52(2) EPC. The concept of "technical invention" must conform to Art 52(2), not vice versa. (see Art 52 EPC: Interpretation and Revision)

amendment
 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.
justification
The EPO is not an EU institution and concerns have previously been raised about its accountability. (CULT 14)

8. [Recital 8: Patents and Public Interest]

amendment
Patent protection allows innovators to benefit from their creativity. Whereas patent rights protect innovation in the interests of society as a whole; they should not be used in a manner which is anti-competitive.Patents are temporary exclusion rights granted by the state to inventors in order to stimulate 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, inevitable corrollaries of the patent system such as restriction of creative freedom, legal insecurity and anti-competitive effects must be kept within reasonable limits.
justification
Innovators can benefit from their creativity without patents. Whether patent rights "protect" or stifle innovation and whether they act in the interests of society as a whole is a question that can only be answered by empirical study, not by dogmatic statements in a law.

9. [Recital 9: Patents and Copyright]

amendment
In accordance with Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs43, the expression in any form of an original computer program is protected by copyright as a literary work. However, ideas and principles which underlie any element of a computer program are not protected by copyright.In accordance with Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs, property in computer programs is acquired by copyright. General ideas and principles which underlie a computer program must stay freely usable, so that many different creators may simultaneously obtain property in invidual creations based thereon.
justification
Copyright does not only apply to literary works, but also to textbooks, operation manuals, computer programs and all kinds of information structures. Copyright is the system of "intellectual property" for computer programs, not only a system for a "literary" side aspect of computer programs. If copyright does not cover the "underlying idea" of a book or a program then that is not an indication of an insufficiency of copyright but rather an indication of the need to keep "underlying ideas" (general concepts) free, so that many different creators have a chance to obtain property in individual works based on these general concepts.

10. [Recital 10: Technical Character]

amendment
In order for any invention to be considered as patentable it should have a technical character, and thus belong to a field of technology.In order for any innovation to be considered a patentable invention it should have a technical character, and thus belong to a field of technology.
justification
The Commission text is not in line with Art 52 EPC. Art 52(2) EPC lists examples of non-inventions. It is not permissible to subsume these under "inventions" and then test their technical character. Moreover, while it can not be inferred from Art 52 EPC that all technical innovations are inventions, it can, based on a unanimous tradition of patent law, be assumed that all inventions have technical character.

11. [Recital 11: Field of Technology]

amendment
Although computer-implemented inventions are considered to belong to a field of technology, in order to involve an inventive step, in common with inventions in general, they should make a technical contribution to the state of the art.While computer programs are abstract and do not belong to any particular field, they are used to describe and control processes in all fields of applied natural and social science.
justification
The Commission text declares computer programs to be technical inventions. It removes the independent requirement of invention ("technical contribution") and merges it into the requirement of non-obviousness ("inventive step"). This leads to theoretical inconsistency and undesirable practical consequences, as explained in detail in the justification of our amendment to 4(2).

12. [Recital 12: Technical Contribution]

amendment
Accordingly, 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.Accordingly, an innovation that does not make a technical contribution to the state of the art is not an invention in the sense of patent law.
justification
The European Commission text merges the "technical invention" test into the "inventive step" test, thereby weakening both tests and opening an infinite space of interpretation. This deviates from Art 52 EPC, is theoretically inconsistent, and leads to undesirable practial consequences, such as making examination at some national patent offices infeasible. See the Justification of Art 4(2) for detailed explanation.

13. [Recital 13: Algorithms]

  1. Recital 13
  2. Recital 13(a)(bis) []

1. Recital 13

amendment
A defined procedure or sequence of actions when performed in the context of an apparatus such as a computer may make a technical contribution to the state of the art and thereby constitute a patentable invention. However, an algorithm which is defined without reference to a physical environment is inherently non-technical and cannot therefore constitute a patentable invention.A defined procedure or sequence of actions involving a set of devices connected to a data processing system may constitute a patentable invention. However an algorithm, regardless of whether the abstract entities of which it consists can be mapped to a physical environment, is inherently non-technical and can not therefore constitute a patentable invention.
justification
The Commission and JURI Proposals make algorithms patentable, if only they are claimed by reference to a universal computer (general-purpose data processing system), which is the common and most general form of presenting and using algorithms.

According to the common understanding of computer science, an algorithm could be defined as a "rule of calculation using abstract entities, such that the result of the calculation is independent of any physical environment to which the entities may be mapped".

The Commission and JURI try to impose a distinction between physical and non-physical ("technical" and "non-technical") algorithms, thereby repeating an error on which computer-science pioneer Professor Donald Knuth commented in 1994:

I am told that the courts are trying to make a distinction between mathematical algorithms and nonmathematical algorithms. To a computer scientist, this makes no sense, because every algorithm is as mathematical as anything could be. An algorithm is an abstract concept unrelated to physical laws of the universe. [...] Therefore the idea of passing laws that say some kinds of algorithms belong to mathematics and some do not strikes me as absurd as the 19th century attempts of the Indiana legislature to pass a law that the ratio of a circle's circumference to its diameter is exactly 3, not approximately 3.1416. It's like the medieval church ruling that the sun revolves about the earth. Man-made laws can be significantly helpful but not when they contradict fundamental truths.

2. Recital 13(a)(bis) []

amendment
 The mere fact that a method may allow data processing to be carried out more quickly, more efficiently or using less memory is not by itself sufficient to cause such a method to be patentable when otherwise it would not be.
justification
In the words of the German Federal Patent Court (Error Search decision, 26 March 2002, BPatG 17 W (pat) 69/98):

If computer implementations of non-technical processes were attributed a technical character merely because they display different specific characteristics, such as needing less computing time or less storage space, the consequence of this would be that any computer implementation would have to be deemed to be of technical character.

14. [Recital 14: EU Law vs National Law]

amendment
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 should remain the essential basis for the legal protection of computer-implemented inventions as adapted or added to in certain specific respects as set out in this Directive.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 should remain the essential basis for the legal protection of computer-implemented inventions as adapted or added to in certain specific respects as set out in this Directive.
justification
The aim of the directive is to reaffirm the legislator's commitment to limiting the scope of patentability in the spirit of Art 52 EPC, whose title "patentable inventions" is referenced in our amendment. This directive should avoid any affirmation of patentability of undelimited categories such as "computer-implemented invention".

15. [Recital 15: Scope of Regulation]

amendment
This Directive should be limited to laying down certain principles as they apply to the patentability of such inventions, such principles being intended in particular to ensure that inventions which belong to a field of technology and make a technical contribution are susceptible of protection, and conversely to ensure that those inventions which do not make a technical contribution are not so susceptible.This Directive should be limited to clarifying the limits of patentability and patent enforcability with regard to computer programs, so as to ensure in particular that only technical inventions are patentable, regardless of whether their implementation involves the use of data processing equipment.
justification
The term "computer-implemented inventions" is designed for abuse, as explained in the amendment to the title.

16. [Recital 16: Competitivity]

  1. Recital 16
  2. Recital 16a []

1. Recital 16

amendment
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.The competitive position of European industry in relation to its major trading partners could be improved if the current schism in the judicial practise concerning the limits of patentability with regard to computer programs was eliminated.
justification
Unification of caselaw in itself is not a guarantee of improvement of the situation of European industry. This directive should not use a pretext of "harmonisation" for changing the rules of Art 52 EPC, which are already in force in all countries. Also, as explained above, the term "computer-implemented invention" implies that programs for computer are patentable inventions and thereby calls for violation of Art 52 EPC.

2. Recital 16a []

amendment
 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 "GNU 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, a reliable legal framework for such alternative development and licensing approaches must be maintained.
justification
This is JURI Amendment 35 as submitted by Evelyn Gebhardt but with a slightly simplified last sentence. This amendment proposal states a generally acknowledged European policy goal. It is to be wondered why it didn't find the support of the JURI majority.

17. [Recital 17: Competition Rules]

This Directive shall be without prejudice to the application of the competition rules, in particular Articles 81 and 82 of the Treaty.

18. [Recital 18: Interoperability]

amendment
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.Similar to Directive 91/250/EEC on the legal protection of computer programs by copyright, this directive ensures that actions serving to achieve interoperability with existing programs can not be forbidden by any law.
justification
The European Commission text is misleading. It pretends to ensure a right to interoperate but in fact does exactly the opposite. Patents grant much broader exclusivity than copyright. Therefore the interoperability exemptions for patents also need to be broader than those for copyright. Limiting them to the scope offered by existing copyright laws is means of assuring that patentee interests override interoperability interests.

19. [Recital 19: Subsidiarity]

amendment
Since the objectives of the proposed action, namely to harmonise national rules on computer-implemented inventions, cannot be sufficiently achieved by the Member States and can therefore, by reason of the scale or effects of the action, be better achieved at Community level, the Community may adopt measures, in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty. In accordance with the principle of proportionality, as set out in that Article, this Directive does not go beyond what is necessary to achieve those objectives.Since the objectives of the proposed action, namely to harmonise national rules on computer-implemented inventions, cannot be sufficiently achieved by the Member States and can therefore, by reason of the scale or effects of the action, be better achieved at Community level, the Community may adopt measures, in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty. In accordance with the principle of proportionality, as set out in that Article, this Directive does not go beyond what is necessary to achieve those objectives.
justification
Terms such as "protection" and "computer-implemented invention" are misleading, as explained in the title amendment.

HAVE ADOPTED THIS DIRECTIVE:

3. The Articles

  1. Article 1: Scope
  2. Article 2: Definitions
  3. Article 3: Fields of Technology
  4. Article 4: Conditions for patentability
  5. Article 5: Claims and Rights
  6. Article 6: Interoperability
  7. Article 7: Monitoring
  8. Article 8: Reporting on the effects of the Directive
  9. Article 9: Implementation
  10. Article 10: Entry into force
  11. Article 11: Addressees

1. Article 1: Scope

amendment
This Directive lays down rules for the patentability of computer-implemented inventions.This directive lays down the rules concerning the limits of patentability and patent enforcability with respect to computer programs.
justification
The term "computer-implemented invention" is not used by computer professionals. It is in fact not in wide use at all. It was introduced by the EPO in May 2000 in the Trilateral Website document "Appendix 6: Examination of 'Business Method' Applications", where it served to legitimate patents on "computer-implemented business methods", so as to bring EPO practise in line with the USA and Japan. Much of the European Commission's directive proposal is based on wordings from this "Appendix 6". The term "computer-implemented invention" is a hidden programmatic statement. It implies that algorithms, business methods and in fact all ideas are patentable inventions, provided that they are claimed in terms of general-purpose data processing equipment. This implication is in contradiction with Art 52 EPC, according to which algorithms, business methods and programs for computers are not inventions in the sense of patent law. It can not be the aim of the current directive to declare programs for computers to be patentable inventions. Rather the aim is to clarify the limits of patentability with regard to computer programs, and this must be expressed clearly and unambiguously.

2. Article 2: Definitions

  1. Computer-Implemented Invention
  2. Technology, Invention, Non-Inventions

1. Computer-Implemented Invention

For the purposes of this Directive the following definitions shall apply:

amendment
"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 prima facie novel features which are realised wholly or partly by means of a computer program or computer programs;"computerised invention", also called "computer-implemented invention", means an innovation the implementation of which involves the use of a data processing system in connection with peripheral devices, and which, due to the way in which the peripheral devices are used, is considered to be an invention in the sense of patent law.
justification
The term "computer-implemented invention" is not used by computer professionals. In fact it is not in wide use at all. It was introduced by the EPO in 2000 in an attempt to legitimate patents on "computer-implemented business methods". It suggests that ideas which can be put to work merely by executing a program on generic computing equipment are patentable inventions. This amendment eliminates the confusion. It makes it clear that an inventive washing machine does not cease to be an invention just because it is controlled by a computer. In a EU Press Release ("MEPs vote to tighten up rules on patentability of computerised inventions", Date: 2003-06-18, on cordis.lu) about this directive, the term "computerised inventions" was introduced, and it was explained that "such inventions do not cover ordinary software programs, but rather solutions for devices such as mobile phones, intelligent household appliances, engine control devices, ...". Indeed the term "computerised invention" depicts more intuitively than "computer-implemented invention" what MEPs meant to be patentable: inventive use of hardware which has been placed under the control of a data processing system.

2. Technology, Invention, Non-Inventions

amendment
"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."technical contribution", also called "invention", means a "contribution to the state of the art in a technical field".
justification
The Commission text merges the invention (technical contribution) test with the non-obviousness (inventive step) test, thereby weakening both tests, deviating from Art 52 EPC, and creating practical problems, see Justification in the Amendment of 4(2).

amendment
 "Technology" in the sense of patent law is applied natural science.
justification
The Commission text shift the question of what is a patentable invention to the question of what is "technical" and then leaves that question unanswered. The rough definition given here corresponds to the worldwide common understanding of the term, implicit in current-day caselaw and in the JURI report other statements about what should be patentable (e.g. "not software as such but inventions related to mobile phones, engine control devices, household appliances, ...") . This understanding should be made explicit for the purpose of clarification.

amendment
 "Technology" in the sense of patent law is "use of controllable forces of nature".
justification
The Commission text shift the question of what is a patentable invention to the question of what is "technical" and then leaves that question unanswered. The rough definition given here corresponds to the worldwide common understanding of the term, implicit in current-day caselaw and in the JURI report other statements about what should be patentable (e.g. "not software as such but inventions related to mobile phones, engine control devices, household appliances, ...") . This understanding should be made explicit for the purpose of clarification.

amendment
 "Technical" in the sense of patent law means "concrete and physical".
justification
The Commission text shift the question of what is a patentable invention to the question of what is "technical" and then leaves that question unanswered. The rough definition given here corresponds to the worldwide common understanding of the term, implicit in current-day caselaw and in the JURI report other statements about what should be patentable (e.g. "not software as such but inventions related to mobile phones, engine control devices, household appliances, ...") . This understanding should be made explicit for the purpose of clarification.

amendment
 An invention in the sense of patent law is a technical solution to a technical problem.
justification
This is a common EPC doctrine which has been regularly used by most patent courts, including the Technical Chambers of Appeal of the EPO.

amendment
 "Invention" in the sense of patent law means "solution of a problem by use of controllable forces of nature".
justification
This is a standard patent doctrine in most jurisdictions. The EPO says that inventions are "technical solutions of technical problems" and understands "technical" as "concrete and physical". The term "controllable forces of nature" clarifies this further. The "four forces of nature" are an acknowledged concept of epistemology (theory of science). While mathematics is abstract and unrelated related to forces of nature, some business methods may well depend on the chemistry of the customer's brain cells, which is however not controllable, i.e. non-deterministic, subject to free will. Thus the term "controllable forces of nature" clearly excludes what needs to be excluded and yet provides enough flexibility for inclusion of possible future fields of applied natural science beyond the currently acknowledged "4 forces of nature". This concept has been formulated in most jurisdictions and even written into the law in some countries such as Japan and Poland. Even the CEC and JURI proposals say that "algorithms and business methods are inherently non technical", and the JURI report associates "technical contributions" with "mobile phones, household appliances, engine control devices, ...". The classical justification for the "technical character" of "computer-implemented inventions" is not that the meaning of "technical" has changed but that the computer indeed consumes energy in a controlled way, and that the "invention" must be "considered as a whole". The critics of this view, e.g. the German Federal Patent Court, argue that "the solution is completed by abstract calculation before, during its non-inventive implementation on a conventional data processing system, forces of nature come into play".

amendment
 An "invention" in the sense of patent law, also called "technical teaching", "technical solution" or "technical contribution", is a teaching of plan-conformant use of controllable forces of nature to immediately, without mediation by human reason, achieve a causally overseeable result.
justification
This is a frequently used definition, as used by the German Federal Court of Justice in its "Anti-Blocking System" decision of 1980. It allowed the court to accept a patent for a computer-controlled anti-blocking system while rejecting a patent for more abstract computing problems such as determining optimal lengths of rolling rods or optimal distribution of air-plane fuel based on flying distances.

amendment
 A calculation rule, also called algorithm, is a teaching about relations within constructions of the human mind, such as models and axiomatic systems, including formal models of data processing equipment such as the Turing Machine or the Von Neumann Machine.

An organisation rule is a teaching about relations between material phenomena that are not determined by controllable forces of nature. Methods of business and social engineering are organisation rules. Most organisation rules are direct applications of calculation rules to known models of social relations. Rules of organisation and calculation are teachings about cause-effect relations that are not determined by controllable forces of nature.

justification
These additional definitions could help to establish terminology which can be used in order to refer to various types of non-inventions. The generic term "rules of organisation and calculation" is taken from the German patent jurisdiction of Dispositionsprogramm and later.

3. Article 3: Fields of Technology

  1. Article 3
  2. Article 3.bis []

1. Article 3

amendment
Computer-implemented inventions as a field of technologyFields of Technology
justification
The article specifies the relation of the European invention concept with Art 27 TRIPs. Thus we are talking about fields of technology in the plural, and inventions can only "belong" to such a field. To which field they may belong is not determined by the means of implementation. Note that the title in the french and german versions of the CEC proposal differs from that in the english version.

amendment
Member States shall ensure that a computer-implemented invention is considered to belong to a field of technology.Member States shall ensure that an innovation is not considered to belong to a field of technology merely because its implementation involves the use of a computer.
justification
The European Commission text says that all ideas, including "computer-implemented business methods" etc, are patentable inventions. This has been widely criticised. See Justification for 3a.

2. Article 3.bis []

amendment
 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 considered to be inventions in the sense of patent law.
justification
One of the chief objectives of the directive project has been to clarify the interpretation of Art 52 EPC in the light of Art 27 TRIPs, which says that "inventions all fields of technology" must be patentable. We propose to translate of Art 52(2) EPC into the language of Art 27 TRIPs, along the lines of Amendment CULT-16.

If data processing is "technical", then anything is "technical".

Data processing is a common denominator of all fields of technology and non-technology. With the advent of the universal computer in the 1950s, automated data processing (ADP) became pervasive in society and industry.

As Gert Kolle, a leading theoretician behind the decisions of the 1970s to exclude software from patentability, writes in 1977 (see Kolle 1977: Technik, Datenverarbeitung und Patentrecht):

ADP has today become an indispensable auxiliary tool in all domains of human society and will remain so in the future. It is ubiquitous. ... Its instrumental meaning, its auxiliary and ancillary function distinguish ADP from the ... individual fields of technology and liken it to such areas as enterprise administration, whose work results and methods ... are needed by all enterprises and for which therefore prima facie a need to assure free availability is indicated.

CULT was well-advised to vote for a clear exclusion of data processing from the scope of "technology".

Numerous studies, some of them conducted by EU instiutions as well as the opinions of the European Economic and Social Committee and the European Comittee of Regions explain in detail why Europe's economy will suffer damage, if data processing innovations are not clearly excluded from patentability.

4. Article 4: Conditions for patentability

  1. Article 4(1)
  2. Article 4(2)
  3. Article 4(3)
  4. Article 4(3)a
  5. Article 4(a)bis []

1. Article 4(1)

amendment
Member States shall ensure that a computer-implemented invention is patentable on the condition that it is susceptible of industrial application, is new, and involves an inventive step.Member states shall ensure that patents are granted only for inventions (also called "technical inventions", "technical contributions", "technical teachings" or "technical solutions") which are new, non-obvious and susceptible of industrial application.
justification
Saying that "inventions are patentable" is tautological in the context of patent law. The question is: what is an invention? The Commission text seems to be saying that any solution which is implemented by a computer is an invention, and that there is no invention test but only tests of novelty, non-obviousness and industrial applicability. Thereby the Commission text drastically changes the rules of Art 52 EPC and allows unlimited patentability. It would possible to delete the Commission's Article 4 entirely, because, once the errors are corrected, we arrive at little more than a literal restatement of Art 52 EPC. Yet, in order to correct a recent practise of the EPO, it may be a good idea to restate that the "technical contribution" is a synonym of "invention" and unrelated to the "inventive step" test. This has been pointed out by many EPO-friendly law scholars, see e.g. the dissertation of Ralph Nack, whom the Commission cites in its explanatory memorandum.

2. Article 4(2)

amendment
Member States shall ensure that it is a condition of involving an inventive step that a computer-implemented invention must make a technical contribution.Member states shall ensure that it is a condition of constituting an invention in the sense of patent law that an innovation, regardless of whether it involves the use of a computer or not, must be of technical character.
justification
Non-obviousness (= "inventive step") and the presence of a technical invention (= "technical contribution") are two separate requirements. Merging them into one is counter-intuitive and leads to practical problems, among others that the invention needn't be new and that patent offices are no longer entitled to reject patents on non-inventions without first conducting a wasteful prior art search.

The Commission text opens several doors for unlimited patentability by deviating from Article 52 EPC. The EPO Examination Guidelines explain Art 52 EPC as follows:

There are four basic requirements for patentability:
  1. There must be an
    "invention"
    .
  2. The invention must be
    "susceptible of industrial application"
    .
  3. The invention must be
    "new"
    .
  4. The invention must involve an
    "inventive step"
    .

In addition to these four basic requirements, the examiner should be aware of the following two requirements that are implicitely contained in the Convention and in the Regulations:

  1. The invention must be such that it can be carried out by a person skilled in the art [...]
  2. The invention must be of "technical character" [...]

The Commission text deviates from Art 52 EPC by merging the independent requirements "technical invention" (renamed to "technical contribution") into the requirement of "inventive step". This is counter-intuitive and theoretically inconsistent, as even the European Commission implicitely admits in its Explanatory Memorandum:

The presence of a "technical contribution" is to be assessed ... under inventive step. Experience has shown that this approach is the more straightforward to apply in practice.

Indeed the approach has no theoretical merits but significant practical effects. It opens an infinite space of interpretation for those patent offices that conduct a full substantive examination, such as the EPO and the German Patent Office, while preventing other patent offices (such as French, Italian) from rejecting patents on non-inventions.

Furthermore, treating "computer-implemented" inventions in a special way, as suggested by the European Commission, runs counter to Art 27 TRIPs. And, as has been pointed out above, the term "computer-implemented invention" itself may run counter to Art 52 EPC by implying that algorithms framed in terms of generic computing equipment (programs for computers) are patentable inventions.

The amendment solves all these problems by restating the structure of Art 52 EPC as explained in the EPO's Examination Guidelines.

3. Article 4(3)

amendment
The technical contribution shall be assessed by consideration of the difference between the scope of the patent claim considered as a whole, elements of which may comprise both technical and non-technical features, and the state of the art.The technical contribution shall be assessed by consideration of the difference between the scope of the technical features of the patent claim as a whole and the state of the art.
justification
The Commission and JURI versions imply that a "technical contribution" can consist solely of non-technical features. This is self-contradictory and leads to unlimited patentablity. Amendment CULT-15 corrects the error, as far as possible.

4. Article 4(3)a

amendment
 In assessing whether a claim discloses an invention, one must disregard the form or kind of claim and concentrate on the content in order to identify the novel contribution which the claimed subject matter makes to the known art. If this contribution does not constitute an invention, there is no patentable subject matter.
justification
"Claim features" can not be a meaningful subject of legal regulation. This amendment is an excerpt from the European Patent Office Examination Guidelines of 1978. It exhorts examiners to disregard the form of the claims and to distrust all attempts at formalising the procedure of patent examination. Formalisation puts the application drafter in control and promotes an uncritical attitude on the part of the examiner.

5. Article 4(a)bis []

amendment
 Member States shall ensure that computer-implemented solutions to technical problems are not considered to be patentable inventions merely because they improve efficiency in the use of ressources within the data processing system.
justification
This amendment reflects current caselaw in Germany. In the words of the justices of the German Federal Patent Court (BPatG, decision of 26. March 2002, 17 W (pat) 69/98, http://swpat.ffii.org/papers/bpatg17-suche02/index.de.html):

The applicant sees as a decisive indication of technicity of the method that it is based on a technical problem. Because the proposed method does not need a dictionary, the memory space for this can be saved. [...] As far as the technical problem is concerned, this can only be considered as an indication but not as a proof of technicity of the process. If computer implementations of non-technical processes were attributed a technical character merely because they display different specific characteristics, such as needing less computing time or less storage space, the consequence of this would be that any computer implementation would have to be deemed to be of technical character. This is because any distinct process will have distinct implementation characteristics, that allow it to either save computing time or save storage space. These properties are, at least in the present case, not based on a technical achievement but result from the chosen non-technical method. If the fact that such a problem is solved could be a sufficient reason for attributing a technical character to a computer implementation, then every implementation of a non-technical method would have to be patentable; this however would run against the conclusion of the Federal Court of Justice that the legal exclusion of computer programs from patentability does not allow us to adopt an approach which would make any teaching that is framed in computer-oriented instructions patentable.

5. Article 5: Claims and Rights

amendment
Form of ClaimsClaims and Rights
justification
We are interested in claim forms only to the extent that they imply certain rights and obligations. The aim of this provision is to explain how patent rights are limited by the freedom of publication (Art 10 ECHR) and other information-related freedom rights.

amendment
Member States shall ensure that a computer-implemented invention may be claimed as a product, that is as a programmed computer, a programmed computer network or other programmed apparatus, or as a process carried out by such a computer, computer network or apparatus through the execution of software.Member States shall ensure that a computerised invention may be claimed as a product, that is a set of devices connected to a data processing system, or as a process carried out by such devices.
justification
This article explains the meaning of the terms "product" and "process" in the context of computerised inventions. The original version interprets both terms correctly but has an undesirable side-effect: it suggests that algorithms framed in terms of generic computing equipment (programs for computers as such) are or can be "inventions". The amendment corrects the error. The inventive products and processes are characterised not by the data processing system but by the peripheral devices, which could e.g. be an automobile brake, a rubber-curing furnace or a washing machine.

amendment
 Member states shall ensure that the publication or distribution of copyrightable objects, including computer programs, can never constitute a direct or indirect patent infringement.
justification
This is to explain how the patent rights are limited by other legal values such as freedom of publication (Art 10 ECHR) and property in individual creations (intellectual property, in the case of software: copyright). This amendment makes it clearer that both freedom of publication and the right to control one's individual creations (copyright) are more fundamental than patent rights and therefore constitute a limit on the allowable scope of patent rights. Wherever copyright is applicable, patents are not, and vice versa. The principle of "maximal separation of spheres of intellectual property" is stated in the Dispositionsprogramm (1976) and Betriebssystem (1990) decisions of the German Federal Court of Justice, and it underlies Article 52 of the European Patent Convention.

amendment
 Member states shall ensure that the execution of a computer program on a conventional data processing system can not constitute a direct or indirect patent infringement.
justification
This is another concretisation the core principle of this directive in the context of patent enforcability. It is based on the distinction between data processing equipment (system of processors with devices for storage and manipulaton of data and for exchange of data with humans and computers) and peripheral devices such as automobile brakes or rubber-curing furncases, which maniuplate material phenomena (forces of nature) rather than information.

amendment
 Member states shall ensure that information is considered to be public knowledge as soon as it is factually possible for the public to obtain this information, even if obtaining it required decoding.
justification
This is to ensure that information (software, databases etc) that is published in closed-source (binary) form can, just like information that is openly accessible, be cited as prior art against a non-novel patent. A generous understanding of what can constitute prior art is one of very few possible ways of reducing the number of trivial patents. If software patents are permissible, this is moreover helps to reduce legal insecurity and possible abuses arising from the fact that many computer programs are published in binary form.

amendment
 Member states shall ensure that any copyrightable work that was in use before the publication date of a patent on which it infringes may be further developped, distributed and executed on data processing equipment by the copyright owner as well as by any persons who have been or will be authorised by the copyright owner at conditions to be determined by the copyright owner.
justification
This provision is needed only to the extent that information (software) patents are not reliably excluded by the directive. When the object of a patent is informational, the scope of "prior use rights" becomes unclear: it becomes either everything or nothing. "Prior use right" means "the right to continue to commercially exploit the idea oneself within certain limits". In the case of information products, such limits cannot be defined. Information does not require distribution efforts but at best more or less futile efforts to restrict distribution. Valuable software tends to become freely available with source code sooner or later in its lifecycle. Patents should be an incentive to publication. When chosing between "everything or nothing", we say "everything".

amendment
 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 shall be published as a part of description wihtout any restricting licensing terms.
justification
Patents are two-sided deals: the inventor discloses information in return for a monopoly. Computer programs are information, whereas the monopoly affects only physical objects. Nothing describes a computerised process more accurately than a well written program. This provision is not designed to promote open-source software but rather to make the patent system take its function of knowledge disclosure seriously. It is similar to ITRE-9, CULT-31 and CULT-32.

6. Article 6: Interoperability

amendment
Relationship with Directive 91/250 CECInteroperability
justification
The title should clearly specify the purpose of the provision rather than secondary aspects such as which other laws may at present be involved in achieving this purpose.

amendment
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.Acts which are permitted under Directive 91/250/EEC on the legal protection of computer programs by copyright, such as the reimplementation of a program's interfaces for the sake of interoperability, shall not be forbidden by patents.
justification
The Commission's text fails to protect interoperability. Decompilation is not an issue, because patents do not forbid decompilation anyway. Patent-specific problems need patent-specific solutions. The Commission's text offers only copyright-specific solutions to patent-specific problems, therebey effectively giving patentees the right to block the use of an idea for purposes of interoperability. The amdendment ensures that patents are not used as a means to obtain control rights over software which copyright does not offer.

amendment
 Member States shall ensure that wherever the use of a patented technique is needed for the sole purpose of ensuring conversion between the conventions used in two different data processing systems so as to allow communication and exchange of data content between them, such use is not considered to be a patent infringement.
justification
This is ITRE-15 with a slight modification: "computer system or network" was replaced with the "data processing system", so that it is clear that not merely interoperability between computer architectures (e.g. IBMPC and Mac) but between any kind of software systems is protected. As the ITRE justification says:
The possibility of connecting equipments so as to make them interoperable is a way of ensuring open networks and avoiding abuse of dominant positions. This has been specifically ruled in the case law of the Court of Justice of the European Communities in particular. Patent law should not make it possible to override this principle at the expense of free competition and users.

7. Article 7: Monitoring

amendment
(1) The Commission shall monitor the impact of computer-implemented inventions on innovation and competition, both within Europe and internationally, and on European businesses, including electronic commerce.The Parliament shall set up a Monitoring Committee which engages the interested scientific communities in monitoring the impact of patents on innovation and competition, both within Europe and internationally, and on European businesses, including electronic commerce.
justification
Patents are controversial, because they may exclude people from a wide range of activities, thus limiting people's freedom of action and potentially colliding with important civil liberties. On the other hands, patents can lead to a concentration of pecuniary beneficts in the hands of small and politically active groups. It is therefore difficult to assure the independence and impartiality of any state-sponsored monitoring activity. At the European Commission, monitoring and consultation work to date has been concentrated in the hands of a few civil servants from DG Internal Market with close affinity to the patent system. In recent years a strong case has been made against patents in various fields such as software and genetics, and these have been reflected in consultations conducted by DG Internal Market. DG Internal Market has regularly disregarded the outcome of such consultations and instead followed the opinions of the patent establishment. Various reports written by DG Internal Market, including a monitoring report on the gene patent directive of 2001, show an dogmatic belief in the beneficiality of patents and an unwillingness to even ask the questions needed to take empirical evidence into account. It is clear that monitoring must be done by an independent and interdisciplinary group of scientists and not by those people who are responsible for the directive proposal whose effects are to be monitored.

amendment
(2) The Commission shall report to the European Parliament and the Council by [DATE (three years from the date specified in Article 9(1))] at the latest on(2) The Commission shall report to the European Parliament and the Council by [DATE (three years from the date specified in Article 9(1))] at the latest on
justification
The monitoring is done by a committee set up by the Parliament, see the amendment to 7(1).

8. Article 8: Reporting on the effects of the Directive

amendment
Reporting on the effects of the DirectiveReporting on the effects of the Directive
justification
Reporting is needed not only once but at regular intervals. In particular it cannot be expected that after 3 years much will be observable, as the EPO usually takes about 5 years to grant a patent.

amendment
The Commission shall report to the European Parliament and the Council by [DATE (three years from the date specified in Article 9(1))] at the latest onThe Monitoring Committee shall publish a summary report about the insights gained by the scientific communities every two years. The Parliament shall have the power to demand revisions based on findings of these reports. If the direcitve is not revised to the satisfaction of the Parliament within two years, the directive shall cease to be in force.
justification
Reporting at regular intervals is needed, and it must be part of a real review process.

amendment
  1. the impact of patents for computer-implemented inventions on the factors referred to in Article 7;
  2. whether the rules governing the determination of the patentability requirements, and more specifically novelty, inventive step and the proper scope of claims, are adequate; and
  3. whether difficulties have been experienced in respect of Member States where the requirements of novelty and inventive step are not examined prior to issuance of a patent, and if so, whether any steps are desirable to address such difficulties.
  1. which computer-related patents have been granted, which refused, which enforced, who the current owners are, and to what extent licenses are available to the public for each granted patent and how likely inadvertent infringement is.
  2. whether the rules governing the determination of the patentability requirements, and more specifically novelty, inventive step and the proper scope of claims, are adequate; and
  3. whether the rules governing the determination of the patentability requirements, and more specifically novelty, inventive step and the proper scope of claims, are adequate; and
  4. to what extent the patent examination system is operating as intended, whether there are sufficient incentives to reject unjustified patent claims, what kind of reforms might be needed in order to allow for a quick and reliable separation of wanted from unwanted patents.
  5. to what extent european professionals in software and other concerned business fields are satisfied with the current scope of exclusivity and where they see a need for a broader or narrower scope.
justification
The report should lead to real insights about the current functioning and effects of the patent system which should be appreciated and undergo the test of peer review in various scientific communities. This amendment incorporates CULT amendment 35.

9. Article 9: Implementation

1. Member States shall bring into force the laws, regulations and administrative provisions necessary to comply with this Directive not later than [DATE (last day of a month)]. They shall forthwith inform the Commission thereof.

When Member States adopt those provisions, they shall contain a reference to this Directive or shall be accompanied by such a reference on the occasion of their official publication. Member States shall determine how such reference is to be made.

2. Member States shall communicate to the Commission the provisions of national law which they adopt in the field governed by this Directive.

10. Article 10: Entry into force

This Directive shall enter into force on the day of its publication in the Official Journal of the European Communities.

11. Article 11: Addressees

This Directive is addressed to the Member States.

Done at Brussels,
For the European Parliament
For the Council
The President
The President

4. Annotated Links

->JURI 2003/04-6 Amendments: Real and Fake Limits on Patentability
Members of the European Parliament's Commission on Legal Affairs and the Internal Market (JURI) submitted amendments to the European Commission's software patent directive proposal. While some MEPs are asking to bring the directive in line with Art 52 EPC so as to clearly restate that programs for computers are not patentable inventions, another group of MEPs is endorsing the EPO's recent practice of unlimited patentability, shrouded in more or less euphemistic wordings. Among the latter, some propose to make programs directly claimable, so as to ensure that software patents are not only granted but achieve maximal blocking effects. This latter group obtained a 2/3 majority, with some exceptions. We document in tabular form what was at stake, what various parties recommended, and what JURI finally voted for on 2003/06/17.
->Plooij/ITRE Counter-Proposal: Publication and Interoperation do not Infringe
The European Parliament's industry committee (ITRE) is working on a counter-proposal for the CEC/BSA software directive proposal, based on a draft by its rapporteur Elly Plooij Van Gorsel, a dutch liberal Member of the European Parliament (MEP). Plooij's first draft states that patents are not needed for protecting the interests of software creators and proposes to assure that programs can at least be freely distributed without any fear of patent liabilities. Moreover, any use of a patented method for the purpose of interoperability (compliance with de facto standards) is not considered to be an infringement. The proposal is strong on defininig these limits but stops short of correcting CEC/BSA misconceptions about "computer-implemented invention", "technical contribution" etc, thus leaving it undecided whether Amazon One-Click and the like are patentable inventions or not. Current law says they are not, but the European Patent Office (EPO) says they are, and the European Commission wants to bring the law in line with the EPO's position. The ITRE counter-proposal solves only part of the problem, but fellow MEPs in ITRE have tabled amendments. Some of these are designed to complete the solution, others to dismantle it.
->Rocard/CULT 2002-12-09: Data Processing is Not a Field of Technology
The chairman of the European Parliament's Cultural Affairs Commission (CULT), Michel Rocard, proposes amendments to the Software Patentability Directive which are intended to exclude patents on program logic and limit patentability to the field of engineering with forces of nature. Rocard aptly speaks the TRIPs idiom of the European Commission. Rocard's amendments constitute the first counter-proposal of an official EU institution where the content actually corresponds to the packaging. It is less ambitious than the FFII counter-proposal and leaves more loopholes. If enacted, it would preserve the systematics of the current law (Art 52 EPC) and thereby oblige the patent offices to achieve those very aims which hard-pressed patent politicians in Brussels, London, Berlin and elsewhere always say are theirs.
->McCarthy 2003-02-19: Amended Software Patent Directive Proposal
Arlene McCarthy, British Labor MEP appointed by the European Parliament's Committee for Legal Affairs and the Internal Market (JURI) to report on the European Commission's Software Patentability Directive Proposal (CEC/BSA Proposal), suggests that the European Parliament should enact the CEC/BSA version with additional safeguards to align Europe on the US practise and make sure that there can be no limit on patentability. McCarthy reiterates the CEC/BSA software patent advocacy and misrepresents the wide-spread criticism without citing any of it. Even economic and legal expertises ordered by the European Parliament and other critical opinions of EU institutions are not taken into account. McCarthy's economic argumentation consists of tautologies and unfounded assertions, such as that companies like Ericsson and Alcatel need software patents to finance their R&D, that SMEs need european software patents in order to compete in the USA, that patents are needed to keep developping countries at bay. McCarthy uses the term "computer-implemented inventions" as a synonym for "software innovations". These "by their very nature belong to a field of technology". McCarthy insists that "irreconcilable conflicts" with the EPO must be avoided. McCarthy says she wants to "set clear limits as to what is patentable" -- and that she wants to avoid the "sterile discussions" about "technical effects" and "exclusions from patentability". Yet her proposal stays confined to such discussions. McCarthy demands that all useful ideas, including algorithms and business methods, must be patentable as "computer-implemented inventions". McCarthy proposes to recognise the EPO as Europe's supreme patent legislator and to make decisions of a few influential people at the EPO irreversible and binding for all of Europe.
->Call for Action
The European Commission's proposal for the patentability of software innovations requires a clear response from the European Parliament, the member state governments and other political players. Here is what we think should be done.
->Patentability Legislation Benchmarking Test Suite
In order to test a law proposal, we try it out on a set of sample innovations. Each innovation is described in terms of prior art, a technical contribution (invention) and a small set of claims. Assuming that the descriptions are correct, we then test our proposed legislation on them. The focus is on clarity and adequacy: does the proposed rule lead to a predictable verdict? Which of the claims, if any, will be accepted? Is this result what we want? We try out different law proposals for the same test series and see which scores best. Software professionals believe that you should "first fix the bugs, then release the code". Test suites are a common way of achieving this. Pursuant to Art 27 TRIPS, legislation belongs to a "field of technology" called "social engineering", doesn't it? Technology or not, it is time to approach legislation with the same methodological rigor that is applicable wherever bad design decisions can significantly affect people's lives.
->Regulation about the invention concept of the European patent system and its interpretation with special regard to programs for computers
We propose that the legislator draft any regulations on the question of software patentability along the lines of the following short and clear text.
->Patent Jurisprudence on a Slippery Slope -- the price for dismantling the concept of technical invention
So far computer programs and other rules of organisation and calculation are not patentable inventions according to European law. This doesn't mean that a patentable manufacturing process may not be controlled by software. However the European Patent Office and some national courts have gradually blurred the formerly sharp boundary between material and immaterial innovation, thus risking to break the whole system and plunge it into a quagmire of arbitrariness, legal insecurity and dysfunctionality. This article offers an introduction and an overview of relevant research literature.
->FFII: Software Patents in Europe
For the last few years the European Patent Office (EPO) has, contrary to the letter and spirit of the existing law, granted more than 30000 patents on rules of organisation and calculation claimed in terms of general-purpose computing equipment, called "programs for computers" in the law of 1973 and "computer-implemented inventions" in EPO Newspeak since 2000. Europe's patent movement is pressing to legitimate this practise by writing a new law. Although the patent movement has lost major battles in November 2000 and September 2003, Europe's programmers and citizens are still facing considerable risks. Here you find the basic documentation, starting from the latest news and a short overview.

Notes

[1] see also Legal study from Amsterdam University commissioned by the European Parliament.
[2] Read e.g. the quotations from all these groups. Whenever politicians make statements about this question, they in fact plead for the border outlined here, but often their words are interpreted in a very special way by their patent officials. Compare e.g. the quote from UK e-minister Patricia Hewitt with its interpretation by the UK Patent Office.
[3] The german version has Programme für Datenverarbeitungsanlagen (programs for data processing equipment) for where the english says programs for computers.
[4] Art 52 EPC: Interpretation and Revision
[5] Rocard/CULT 2002-12-09: Data Processing is Not a Field of Technology
[ Call for Action → EU Software Patent Directive Amendment Proposals | EU Software Patent Directive Core Amendments ]
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