Defining "Computer Aided/Implemented Invention"

The European Patent Office (EPO) began to declare unpatentable subject matter as patentable by simply defining it to be an "invention". A generic computing solution, called "program for computers" in the language of the European Patent Convention and excluded from patentability, is implicitely declared patentable by calling it "computer-implemented invention". In public communication, the defenders of this position however pretend that "CII" refers to "computer-aided" systems, such as washing machines or battery chargers operating running under computer control.

Several groups have proposed ways to resolve the conflict. It is unavoidable to use both the more appropriate term "computer-aided invention" and the legacy term "computer-implemented invention" and to define them in the way in which the EPO supporters want to make us believe they are defined.

The term "computer-aided" is commonly used in the industry and has been used in the patent literature and in press releases which argue in favor of the Commission/Council approach. They have used this term because it conveys the legislators intention in the most natural language. The term "computer-assisted" seems to be a variant of "computer-aided", possibly originating from a French version of the same term.

The term "computer-controlled" specifies the way in which the computer interacts with the invention and lets people think that the invention is always a process and that the computer always controls the whole process. It has not been used either in the patent literature or in the rhetoric of those who promote the directive. These factors seem to make it slightly less elegant and easier to attack than "computer-aided".

no.	submitted by	vote	critique
24	Rocard	+	Similar to an amendment adopted in first reading, except that "implemented" was replaced with "controlled" and that the clarification that "invention" is an "invention in the sense of patent law", i.e. a patentable innovation, has been dropped.
50 51	Kudrycka, Zwiefka; Bertinotti	++	minimalist definition, rectifies the Council's implication that computing solutions are patentable inventions, simplifies wording, removes superfluous implications about software patentability, avoids direct reference to non-EU law which had been criticised by the Commission.
52	Kauppi	+	makes it clear that "invention" does not refer to "any" claim object that involves computers but rather to inventions in the sense of patent law.
53	Szejna	o	makes it clear that a "computer-implemented invention" is not "any" claim object involving computers but an invention in the sense of patent law. Similar to 54, but removal of "technical" and weakening of "must" to "should" is slightly disadvantageous. Also, the Commission has criticised the reference to non-EU law, and in fact there may be more elegant ways to inherit the concepts of the EPC than to refer directly to the EPC.
54	Lichtenberger, Frassoni	+	similar to the amendment adopted in first reading, except that "implemented" was replaced with "assisted" and the reference to the EPC has been dropped, so it compromises with Commission criticism that the EPC cannot be embedded in EU law like that.
55	Ortega	+	makes it clear that a "computer-implemented invention" is not "any" claim object involving computers but an invention in the sense of patent law. Similar to 54, but removal of "technical" and weakening of "must" to "should" is slightly disadvantageous. Also, the Commission has criticised the reference to non-EU law, and in fact there may be more elegant ways to inherit the concepts of the EPC than to refer directly to the EPC.
56	Harbour	o	This amendment makes it clear that a "computer-implemented invention" is not just any claim object involving computers but an innovation that has passed the test of patentable subject matter. However unwarranted insinuations about patentability of software solutions are retained, and the direct reference to an external body of law may not be the most elegant way to solve the problem. At least the Commission has said that they find such a reference unacceptable.

Amendment 24

submitted by:

Michel Rocard

provision:

art 2 pt a a

language:

French

topic:

CAI

recommendation:

+

amendment
"computer-implemented invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program or computer programs;	"computer-controlled invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus, the invention having one or more nontechnical features realised wholly or partly by means of a computer program or computer programs, besides the technical features which any invention must possess;
justification

Critique

Similar to an amendment adopted in first reading, except that "implemented" was replaced with "controlled" and that the clarification that "invention" is an "invention in the sense of patent law", i.e. a patentable innovation, has been dropped.

Amendment 50

submitted by:

Barbara Kudrycka, Tadeusz Zwiefka

provision:

art 2 pt a

language:

English

topic:

CAI

recommendation:

++

amendment
"computer-implemented invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program or computer programs;	"Computer-aided invention", also called "computer-implemented invention", means an invention in the sense of patent law the performance of which involves the use of a programmable apparatus;
justification
In their press release upon adoption of the "Common Position", the Council says that that their text did not allow patening of software as such but only of washing machines, mobile phones etc, which they called "computer-aided inventions". When a solution is "aided" by a computer, such as is the case e.g. in "computer-aided design" and "computer-aided manufacturing" (CAD/CAM), the claim is usually not directed to the software as such, but to an industrial engineering process. A computer can aid such a process but not implement it. A computer alone can only "implement" (= run) a software solution, and software running on a computer is nothing more than software as such and thus not an "invention" in the sense of patent law. As long as the old term is still in use, it has to be defined here as a synonym. This amendment removes wordings from the Council text which are unclear and redundant and whose only purpose seems to be to suggest that the claimed invention can consist in nothing but software running on a computer. This amendment is a simplified version of an amendment adopted in 1st reading.

Critique

minimalist definition, rectifies the Council's implication that computing solutions are patentable inventions, simplifies wording, removes superfluous implications about software patentability, avoids direct reference to non-EU law which had been criticised by the Commission.

Amendment 51

submitted by:

Fausto Bertinotti

provision:

art 2 pt a

language:

English

topic:

CAI

recommendation:

++

amendment
"computer-implemented invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program or computer programs;	"Computer-aided invention", also called "computer-implemented invention", means an invention in the sense of patent law the performance of which involves the use of a programmable apparatus;
justification
In their press release upon adoption of the "Common Position", the Council says that that their text did not allow patening of software as such but only of washing machines, mobile phones etc, which they called "computer-aided inventions". When a solution is "aided" by a computer, such as is the case e.g. in "computer-aided design" and "computer-aided manufacturing" (CAD/CAM), the claim is usually not directed to the software as such, but to an industrial engineering process. A computer can aid such a process but not implement it. A computer alone can only "implement" (= run) a software solution, and software running on a computer is nothing more than software as such and thus not an "invention" in the sense of patent law. As long as the old term is still in use, it has to be defined here as a synonym. This amendment removes wordings from the Council text which are unclear and redundant and whose only purpose seems to be to suggest that the claimed invention can consist in nothing but software running on a computer. This amendment is a simplified version of an amendment adopted in 1st reading.

Critique

minimalist definition, rectifies the Council's implication that computing solutions are patentable inventions, simplifies wording, removes superfluous implications about software patentability, avoids direct reference to non-EU law which had been criticised by the Commission.

Amendment 52

submitted by:

Piia-Noora Kauppi

provision:

art 2 pt a

language:

English

topic:

CAI

recommendation:

+

amendment
"computer-implemented invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program or computer programs;	"computer-implemented invention" means an invention within the meaning of the European Patent Convention, the performance of which involves the use of a computer, computer network or programmable apparatus.
justification
Reference to the European Patent Convention definition is clearer.

Critique

makes it clear that "invention" does not refer to "any" claim object that involves computers but rather to inventions in the sense of patent law.

Amendment 53

submitted by:

Andrzej Jan Szejna

provision:

art 2 pt a

language:

Polish

topic:

CAI

recommendation:

+

amendment
"computer-implemented invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program or computer programs;	"computer-implemented invention" means any invention within the sense of patent law the application of which involves the additional use of a computer, computer network or other programmable apparatus as a control apparatus, which changes one or more features of the state of the art in a given field;
justification
This statement shows that a 'computer-implemented invention' is equal to 'involving the additional use of a computer'.

Critique

makes it clear that a "computer-implemented invention" is not "any" claim object involving computers but an invention in the sense of patent law. Similar to 54, but removal of "technical" and weakening of "must" to "should" is slightly disadvantageous. Also, the Commission has criticised the reference to non-EU law, and in fact there may be more elegant ways to inherit the concepts of the EPC than to refer directly to the EPC.

Amendment 54

submitted by:

Evelin Lichtenberger, Monica Frassoni

provision:

art 2 pt a

language:

English

topic:

CAI

recommendation:

+

amendment
"computer-implemented invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program or computer programs;	"computer-assisted invention" means any invention the performance of which involves the use of a computer, a computer network or other programmable apparatus and having one or more non-technical features which are realised wholly or partly by means of a computer programme or computer programmes besides the technical features that any invention must contribute.
justification
This is very close to EP 1st reading article 2a ; this amendment aims at ensuring that software cannot be patentable, but rather only computer-assisted hardware inventions, software needs to be excluded from the "technical" field, as Parliament did at first reading.

Critique

similar to the amendment adopted in first reading, except that "implemented" was replaced with "assisted" and the reference to the EPC has been dropped, so it compromises with Commission criticism that the EPC cannot be embedded in EU law like that.

Amendment 55

submitted by:

Manuel Medina Ortega

provision:

art 2 pt a

topic:

CAI

recommendation:

+

amendment
"invenciones implementadas en ordenador", toda invención para cuya ejecución se requiera la utilización de un ordenador, una red informática u otro aparato programable, teniendo la invención una o más características que se realicen total o parcialmente mediante un programa o programas de ordenador;	"invenciones asistidas por ordenador", toda invención en el sentido del Convenio de Patente Europea para cuya ejecución se requiera la utilización de un ordenador, una red informática u otro aparato programable y teniendo en su aplicación una o más características no técnicas que se realicen total o parcialmente mediante un programa o programas de ordenador, además de las características que cualquier invención deba aportar.
justification
El artículo 52 del CEP establece claramente que un programa de ordenador independiente (o un programa de ordenador como tal) no puede constituir una invención patentable. Esta enmienda aclara que una innovación es solamente patentable si se ajusta al artículo 52 del EPC, independientemente de si un programa de ordenador forma parte de su aplicación o no. Esta enmienda se adoptó en una forma ligeramente diferente en la primera lectura del PE. Se establecía "invención aplicada a través de ordenador" en vez de "invención asistida por ordenador". La razón para este cambio de la terminología se encuentra en la justificación para el artículo 1.

Critique

makes it clear that a "computer-implemented invention" is not "any" claim object involving computers but an invention in the sense of patent law. Similar to 54, but removal of "technical" and weakening of "must" to "should" is slightly disadvantageous. Also, the Commission has criticised the reference to non-EU law, and in fact there may be more elegant ways to inherit the concepts of the EPC than to refer directly to the EPC.