Do not codify the EPO's "Further Technical Effect" doctrine!
What is the "normal interaction between a cook and a recipe"? Which effects go beyond this interaction? The EPO does not know the answer, and nobody does. The EPO itself has stated publicly that this doctrine is meaningless and was only introduced in order to circumvent the law. The Council has proposed to use it for circumventing the Parliament's clear limitation. In general, only clear and simple general rules should become law. Methodological concepts from patent examination should not be codified even when they are of better quality than this one. A remaining question is whether the concerned Council provisions should be deleted entirely or replaced with a correcting amendment. They are so thouroughly flawed that a correcting amendment will to look very different from the original. Possibly existing correction amendments should be subdivided into a deletion and an insertion.
- submitted by:
- Klaus-Heiner Lehne
- provision:
- art 2 pt b a nov
- language:
- English
- topic:
- Further Technical Effect
- recommendation:
- -
| amendment |
| |
"Technical" means the identification of a physical effect which goes beyond the digital representation of information and the normal physical interaction between software and hardware of a computer, network or other programmable apparatus.
|
| justification |
| It is necessary to make clear that the term "technical" demands the identification of a physical effect. Such an effect must be produced in addition to effects with regard to digital representation of information and such caused merely by the interaction between software and hardware with regard to operability. |
Critique
meaningless definition, resulting from flawed transformation of a flawed EPO doctrine.
It could have been a good idea to define "technical" simply as "physical". In its current convoluted state, the amendment is meaningless. It reads like an erroneous term transformation of the EPO's erroneous doctrine of "further technical effect".
- submitted by:
- Andrzej Jan Szejna
- provision:
- art 4 par 2
- language:
- Polish
- topic:
- Further Technical Effect
Definition of "Data Processing" and "Computer Program"
- recommendation:
- o
| amendment |
| A computer-implemented invention shall not be regarded as making a technical contribution merely because it involves the use of a computer, network or other programmable apparatus. Accordingly, inventions involving computer programs, whether expressed as source code, as object code or in any other form, which implement business, mathematical or other methods and do not produce any technical effects beyond the normal physical interactions between a program and the computer, network or other programmable apparatus in which it is run shall not be patentable. |
A computer-implemented invention shall not be regarded as making a technical contribution merely because it involves the use only of a computer, network or other programmable apparatus, with no practical possibility of its application in the starting and controlling of material systems. Accordingly, inventions involving exclusively computer programs, whether expressed as source code, as object code or in any other form, and those which implement business, as well as mathematical computational methods, texts recorded on a carrier and algorithms themselves shall not be patentable.
|
| justification |
| Two statements are included in this point: firstly, it removes the possibility of using a computer or network or other control apparatus to produce programs that will be submitted for patent, and secondly it excludes internal computer programs as well as all mathematical methods and different algorithms as well as business methods from being patentable solutions. |
Critique
Good intentions, removes the Council's empty talk about "further technical effects", but retains some of its other key errors:
- uses the term "invention" to refer to unpatentable subject matter
- talks about the expression side of a computer program which is offtopic and designed to be abused for voiding the exclusion.
- There is always a "possibility" that a program be used for manufacturing etc, and "inventions" can always be said to not "involve exclusively computer programs", so this limits nothing
- submitted by:
- Evelin Lichtenberger, Monica Frassoni
- provision:
- art 4 par 2
- language:
- English
- topic:
- Further Technical Effect
| amendment |
| A computer-implemented invention shall not be regarded as making a technical contribution merely because it involves the use of a computer, network or other programmable apparatus. Accordingly, inventions involving computer programs, whether expressed as source code, as object code or in any other form, which implement business, mathematical or other methods and do not produce any technical effects beyond the normal physical interactions between a program and the computer, network or other programmable apparatus in which it is run shall not be patentable. |
A computer-implemented invention shall not be regarded as making a technical contribution merely because it involves the use of a computer, network or other programmable apparatus. Accordingly, computer programs, which implement business, mathematical or other methods and do not produce any technical effects beyond the normal physical interactions between a program and the computer, network or other programmable apparatus in which it is run, shall not be patentable.
|
| justification |
| The definition of inventive step supplied by the Council is not suitable, as it refers to the definition of a technical contribution, which is not itself explicitly defined, but which does, however, make reference, by means of the word ‘contribution’, to an inventive step. In order to break this vicious circle, inventive step needs to be defined in relation to itself. In order for a new computer program executed on a technical device not to be a patentable invention, the inventive step has to be evaluated solely in relation to the technical features of the patent claim. |
- submitted by:
- Toine Manders
- provision:
- art 4 par 2
- language:
- English
- topic:
- Further Technical Effect
| amendment |
| A computer-implemented invention shall not be regarded as making a technical contribution merely because it involves the use of a computer, network or other programmable apparatus. Accordingly, inventions involving computer programs, whether expressed as source code, as object code or in any other form, which implement business, mathematical or other methods and do not produce any technical effects beyond the normal physical interactions between a program and the computer, network or other programmable apparatus in which it is run shall not be patentable. |
A computer-implemented invention shall not be regarded as making a technical contribution merely because it involves the use of a computer, network or other programmable apparatus.
2a Inventions involving computer programs, whether expressed as source code, as object code or in any other form, which implement business, mathematical or other methods and do not produce any technical effects beyond the normal physical interactions between a program and the computer, network or other programmable apparatus in which it is run shall not be patentable.
|
| justification |
| A technical amendment to define more clear in the text that inventions involving computer programs, which implement business, mathematical or other methods and do not produce any technical effects beyond the normal physical interactions between a program and the computer, network or other programmable apparatus in which it is run are not patentable. |
- submitted by:
- Evelin Lichtenberger, Monica Frassoni
- provision:
- rec 14
- language:
- English
- topic:
- Further Technical Effect
| amendment |
| The mere implementation of an otherwise unpatentable method on an apparatus such as a computer is not in itself sufficient to warrant a finding that a technical contribution is present. Accordingly, a computer-implemented business method, data processing method or other method, in which the only contribution to the state of the art is non-technical, cannot constitute a patentable invention. |
Accordingly, whilst computer-controlled inventions belong to a technical field, because their technical contribution lies outside the software that controls them, implementation on an apparatus such as a computer of an otherwise unpatentable method, such as a business method, data-processing method or any other method, in which the contribution to the state of the art is not technical in nature, cannot under any circumstances be considered a technical contribution. Accordingly, such an implementation cannot under any circumstances constitute a patentable invention.
|
| justification |
| The initial wording is open to misunderstanding, as it implies that there could be a contribution to the state of the art that is not technical. It is important to distinguish what is technical from what is not. |
- submitted by:
- Andrzej Jan Szejna
- provision:
- rec 14
- language:
- Polish
- topic:
- Further Technical Effect
- recommendation:
- +
| amendment |
| The mere implementation of an otherwise unpatentable method on an apparatus such as a computer is not in itself sufficient to warrant a finding that a technical contribution is present. Accordingly, a computer-implemented business method, data processing method or other method, in which the only contribution to the state of the art is nontechnical, cannot constitute a patentable invention. |
The mere application of an otherwise unpatentable method on an apparatus such as a computer is not in itself sufficient to warrant a finding that a technical contribution is present. Accordingly, a computer-implemented business method, data processing method or other method of a non-technical nature cannot constitute a patentable invention.
|
| justification |
| This statement is cohesive in relation to those included in recitals 11,12 and 13 and is a specific repetition. |
Critique
The Council implied that a business method or other non-invention could "make a technical contribution" and thereby become patentable. The amendment removes this error.
The "normal interaction between programs and computers" is about as well defined as the "normal interaction between the cook and the recipe". It is a legal formula which the EPO invented in 1998 in order to circumvent Art 52 EPC. Only two years later, the EPO itself
commented on this formula as follows:
"There is no need to consider the concept of "further technical effect" in examination, and it is preferred not to do so for the following reasons: firstly, it is confusing to both examiners and applicants; secondly, the only apparent reason for distinguishing "technical effect" from "further technical effect" in the decision was because of the presence of "programs for computers" in the list of exclusions under Article 52(2) EPC. If, as is to be anticipated, this element is dropped from the list by the Diplomatic Conference, there will no longer be any basis for such a distinction. It is to be inferred that the BoA would have preferred to be able to say that no computer-implemented invention is excluded from patentability by the provisions of Articles 52(2) and (3) EPC."
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