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Software Patents > Reviews > CEC/BSA > Positions > CEU/DKPTO 2002/09/23..: Software Patentability Directive Amendment Proposal
PositionsCEU/DKPTO 2002/09/23..: Software Patentability Directive Amendment ProposalFrance: Non MerciEPO 2002-06-21: report to SACEPO on CEC/BSA proposal

CEU/DKPTO 2002/09/23..: Software Patentability Directive Amendment Proposal
Commemorate Banana Union Day

The Council of the European Union (CEU) proposes to rewrite some articles of the CEC/BSA proposal of 2002/02/20 in order to take into account various criticisms made by national delegations to the Council's Intellectual Property Working Party, a workgroup consisting of delegates from national patent administrations. This counter-proposal was worked out by the delegates from Denmark, i.e. from the Danish Patent Office (DKPTO), which are presiding over the workgroup during the second half of 2002. The paper is the subject of decision at the Working Party's session on 2002/10/03 in Brussels. We present the paper in tabular comparison with the original CEC/BSA proposal of 2002/02/20. It becomes evident that the DKPTO proposal, while strengthening the rhetorical emphasis on the "technical contribution", creates additional ambiguities and in effect further widens the scope of patentability.
  1. Header Text
  2. Tabular Comparison: CEC/BSA vs CEU/DKPTO
  3. Annotated Links
COUNCIL OF THE EUROPEAN UNION
Brussels, 23 September 2002

Interinstitutional File:
2002/0047 (COD)
SN 3589/02 (PI)

WORKING DOCUMENT

from:
Presidency
to:
Working Party on Intellectual Property (Patents)
No. Cion prop.:
6580/02 PI 10 CODEC 242
Subject:
Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions -- Presidency compromise proposal for Articles 2 to 7 and for certain recitals

Following discussions in the Working Party, the Presidency hereby submits a compromise proposal regarding Articles 2 to 7 and recitals 13 to 13c of the proposed Directive for discussion at the next Working Party meeting, scheduled for 3 October 2002. This proposal replaces the Presidency compromise proposal in SN 3229/02 (PI).

BSA/CECCEU/DKPTO
...
Recitals 13 to 13c
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.13 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.
13a However, the mere implementation of an otherwise unpatentable method on an apparatus such as a computer is not in itself sufficient to warrant a finding that a technical contribution is present. Thus, a computer-implemented business or other method in which the only contribution to the state of the art is non-technical cannot constitute a patentable invention.
13b Moreover, if the contribution to the state of the art relates solely to unpatentable matter, then there can be no patentable invention irrespective of how that matter is presented in the claims.
13c Furthermore, an algorithm which is defined without reference to a physical environment is inherently non-technical and cannot therefore constitute a patentable invention.
...
Article 2II.
Definitions
For the purposes of this Directive the following definitions shall apply:
  1. "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;
  2. "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.
For the purposes of this Directive the following definitions shall apply:
  1. "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;[1]
  2. "technical contribution" means a contribution to the state of the art in a field of technology which is [new and] not obvious to a person skilled in the art. The technical contribution shall be assessed by consideration of the difference between the state of the art and the scope of the patent claim considered as a whole, which must comprise technical features, irrespective of whether or not these are accompanied by non-technical features.[2]
Article 3 
Computer-implemented inventions as a field of technology 
Member States shall ensure that a computer-implemented invention is considered to belong to a field of technology.--Deleted-- (substance incorporated in paragraph 4(1))
Article 4III.
Conditions for patentability
  1. In order to involve an inventive step, a computer-implemented invention must make a technical contribution. A "technical contribution" is a contribution to the state of the art in a technical field which is not obvious to a person skilled in the art.
  2. The technical contribution must be assessed by consideration of the difference between the scope of the patent claim considered as a whole, which may comprise both technical and non-technical features, and the state of the art.
  1. Member States shall ensure that a computer-implemented invention is considered to belong to a field of technology. However, in order to be patentable it must be new, involve an inventive step and be susceptible of industrial application. It is a condition for involving an inventive step that a computer-implemented invention makes a technical contribution.[3]
  2. 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 having no technical character, and which do not produce any technical effects beyond the normal physical interactions between the program and the computer, network, or other apparatus in which it is run, shall not be patentable.[4]
Article 5IV.
Form of Claims
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.
  1. 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.
  2. A claim to a computer program, either on its own or on a carrier, shall not be valid unless that program would, when loaded in a computer, programmed computer network or other programmable apparatus, implement a valid patent claim relating to the same application in accordance with paragraph IV. [ The Italian Delegation has suggested adding the following sentence: Nevertheless, patent protection for a computer-implemented invention does not extend to the expression of a computer program based on that invention, in source code or object code or in any other form. ][5]
Article 6V.
Relationship with Directive 91/250 CEC
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.The rights conferred by patents granted for inventions within the scope of this Directive shall not extend to acts permitted under Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular under the provisions thereof in respect of decompilation and interoperability.[6]
Article 7VI.
 Monitoring
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 Commission shall monitor the impact of the protection by patents of computer-implemented inventions on innovation and competition, both within Europe and internationally, and on European businesses, including electronic commerce.
...

Notes

[1] This still means that pure computer programs, i.e. ideas consisting exclusively of calculation rules and elements of the universal computer, must be considered to be patentable inventions. The crucial question, whether a calculation rule defined in terms of the universal computer is an invention, is answered only indirectly. Yes, calculation rules are, according to the DKPTO proposal just as according to other EPO-dominated proposals, patentable inventions. By lumping logical and physical innovation together into the propagandistic term "computer-implemented invention" and surrounding it with unintelligible pseudo-limitations, the DKPTO, like other friends of the EPO, is trying to blur borders and assure that patent offices can do whatever they like.
[2] What must comprise technical features? The "difference" or the "claim as a whole"? If the former is meant, untechnical ideas are not patentable. If the latter is meant, anything is patentable. Unfortunately the latter meaning seems to be intended -- and reinforced by the appositive "as a whole".
[3] The DKPTO is merely moving text around without making it any better: truth of statements such as "X belongs to a field of Y" is independent of legislative decisions. The question of non-obviousness (inventive step) again is independent of the question of technical character. An invention can be technical, non-obviousness cannot, no matter how hard member states try. Notwithstanding the DKPTO's attempts at changing fundamental truths by means of legislation: if computing (informatics/programming) is a "field of technology" under Art 27 TRIPs, then it will become difficult to refuse any software patent on other grounds than obviousness or lack of novelty. And this is precisely what the DKPTO's legalese junktalk is likely to boil down to in practise: technicity is inherent in non-obviousness and therefore no longer available as an independent means of determining whether an invention is present.
[4] This could be seen as requiring that some peripheral hardware that goes beyond the universal computer, such as e.g. equipment for an industrial production process, must be present. Unfortunately this is not made clear, and any patent attorney who is unable to construct a "technical effect" according to the DKPTO proposal's terms will not be worth his money.
[5] If the computer program really did implement a technical invention, it would be sufficient to claim the technical process which involves some novel peripheral hardware or novel physical causality. By allowing direct program claims, the DKPTO makes it clear that it did not mean paragraph IV as a real restriction on what can be patented. The Italian addition is likely to be interpreted as a tautology without practical effect, but it shows that even within the Brussels round of patent administrators some people are concerned about the CEU/DKPTO's assault on freedom of expression.
[6] This makes the article clearer and thereby somewhat stronger. Still it stops short of creating a meaningful interoperability exemption as proposed by the FFII counter-proposal's version of this article.
[ CEC & BSA 2002-02-20: proposal to make all useful ideas patentable → CEU/DKPTO 2002/09/23..: Software Patentability Directive Amendment Proposal | France 2002-03-01: EU Commission Directive Proposal Unacceptable | EPO 2002-06-21: report to SACEPO on CEC/BSA proposal ]
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english version 2004/08/16 by Hartmut PILCH