Committee: Legal Affairs
On the patentability of computer-implemented
Proposal for a Directive
Monday, 27 June 2005
Council common position
Amendment by Parliament
This Directive lays down rules for the
patentability of computer-implemented
This directive lays down the rules
concerning the patentability of
This replacement is to be performed at all places in the text where the expression
"computer-implemented invention" is used.
The expression "computer-implemented" is not suitable, because it implies that an
invention can be wholly realised by means of a computer, which would mean that pure
software is patentable. Since both the Commission and the Council agreed that software
should not be patentable, the terminology used in the directive should not imply the
contrary. The scope of the directive is thus the one of the patenting of devices that use
software in order to aid the performance of the claimed invention.
The concept of a computer-implemented invention is not used by computer experts either,
and in fact is not in wide use at all. It was introduced in May 2000 by the European
Patent Office (EPO) to justify the patenting of "computer-implemented business methods"
and bring EPO practice into line with Japanese and US practice. The term "computer-
implemented invention" implies that solutions involving only generic computers are
This idea is contrary to Article 52 of the European Patent Convention, which states that
algorithms, methods for doing business, and computer programs do not constitute
inventions within the meaning of patent law.The directive can not be intended to declare
computer programs to be patentable inventions by presenting them in some other
(a) "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;
(a) computer-aided invention means
any invention in the sense of patent
law the performance of which involves
the use of programmable apparatus;
In some jurisdictions, the understanding of the term "invention" has gradually been
slipping towards meaning "anything appearing in a patent claim". By adding the
requirement that it should be an invention in the sense of patent law, this article stresses
that this definition has to be read in conjunction with the requirements laid down for
inventions in general patent law (such as the patent law of member states, the European
Patent Convention, or the future community patent directive).
(b) "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
(b) "technical contribution" means a
contribution to the state of the art in a
field of technology. The contribution is
the set of features by which the scope
of the patent claim as a whole is
considered to differ from the state of
the art. The contribution must be
technical, that is, comprise technical
features and belong to a field of
technology. Without a technical
contribution, there is no patentable
subject-matter and no invention. The
technical contribution must fulfil the
conditions for patentability. In
particular, it must be novel and not
obvious to a person skilled in the art.
The concept of technical contribution has pervaded the discussion about the directive and
generated great confusion and therefore to some extent deserves to be clarified. While
intuitively and in the subjective belief of most commentators the technical contribution
appears to be related to the question of patentable subject matter (Article 52 EPC), the
EPO used the term as a means of abolishing the subject-matter test by mixing it with the
non-obviousness test (Article 56 EPC) in obscure ways, which national courts and
ministerial patent officials have found difficult to follow. A similar amendment was
adopted in first reading by the EP. This amendment adds some ideas of the Council such
as that of subtracting the prior art from the claimed object.
This amendment is very similar to what was approved in JURI. It corrects one error in
the second sentence however: the JURI version states that the technical contribution is
the set of features which is claimed to differ from the state of the art. This implies that all
features not part of the state of the art are by definition technical, which is of course not
necessarily the case.
Article 2(ba) (new)
(ba) a "field of technology" is a field
of applied natural science;
The Council's draft draws heavily on terms such as "technology", "technical", "fields of
technology", "technical contribution", "technical effect" etc, without explaining whether
"technology" here is "applied natural science", i.e. the traditional meaning in patent law,
or "applied exact science", a wider meaning which includes mathematics, business
methods and in fact anything that can be programmed on a computer. The consequence
of this wider meaning, which is implied in some decisions of the EPO, is, in the words of
a leading EPO theoretician, that "all practical problem solutions are technical
The German Federal Court of Justice insists on the narrower meaning, as witnessed in
the revocation of a computer-implemented "communication solution" patent in 2004 with
the reason that "the problem does not require the use of controllable forces of nature". As
their presiding judge recently stressed at a hearing in Berlin, a choice by the legislator
for this narrower meaning is absolutely necessary, as otherwise there would no longer be
any secure legal basis for rejecting business method patents
Article 2(bc) (new)
(bc). A "computer" is a realisation of
an abstract machine, consisting of
entities such as processing units,
storage space and interfaces for
information exchange with external
systems and human users. "Data
processing" is calculation with
abstract component entities of
computers. A "computer program" is
a data processing solution which can,
once it has been correctly described,
be executed by computers.
Definition of the computer program is important for determining the patentability. This
amendment also restricts overly broad interpretations of the term "data processing" by
defining it as an abstract process. The Council defined "computer program" in its Article
4.2 indirectly as "the source code or object code of one individual computer program".
This is inappropriate, since patent law does not deal with computer programs at that
In order to be patentable, a computer-
implemented invention must be
susceptible of industrial application and
new and must involve an inventive step.
In order to involve an inventive step, a
computer-implemented invention must
make a technical contribution.
In order to be patentable, a computer-
aided invention must make a technical
contribution. The technical
contribution must be new and not
obvious to the person skilled in the
The Council's proposal is inconsistent here. In its article 2b, the Council says that a
technical contribution must be new and non-obvious (= involve an inventive step). In this
article the Council says that for an invention to be non-obvious, there must first be a
technical contribution. This amendment resolves the contradiction by bringing this
article in line with Article 2b, which represents the common sense of patent law in
Europe as used by most national courts today. It was also used by the EPO before 2000,
when the "Controlling Pension Benefits System" decision brought the confusion,
apparently in a hectic attempt to create new rules for the planned directive.
This amendment is a simplified version of the amendment adopted in JURI. It also fixes
that amendment's second sentence which indicates that the contribution can consist
entirely out of non-technical features.
Article 4 paragraph 1
1. A computer program as such cannot
constitute a patentable invention.
1. While products and processes in all
fields of technology are patentable
inventions regardless of whether or
not they involve computer programs,
the subject matter and activities
within the computer programs are not
patentable on their own.
Article 52(2) EPC states that programs for computers, along with aesthetic creations,
mathematical methods, business methods et al, are not inventions in the sense of patent
law. Art 52(3) limits the exclusions to subject matter and activities as such. There has
been much dispute about how article 52(3) should be applied to 52(2). While it is a good
idea to transfer Art 52 EPC into EU law, care should be taken to transfer not only the
words, but also to resolve the ambiguities and thereby achieve harmonisation and
Article 4 paragraph 2
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,
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.
2. A computer-aided invention shall
not be regarded as making a technical
contribution merely because it uses
better algorithms so as to reduce the
need for processing time, storage
space or other resources within the
data processing system. Accordingly,
innovations involving computer
programs which do not solve any
problems of applied natural science
beyond the improvement of data
processing efficiency shall not be
The Council's version is tautological and implies that business methods are patentable
inventions when they "produce a further technical effect", i.e. when they fulfill a
condition which the European Patent Office, which invented this rhetoric in 1998, has
admitted to be meaningless.
Since computers are well known, the presence of a computer can of course not by itself
constitute a technical contribution. The question is whether the presence of a computer in
combination with an improved algorithm can constitute a technical contribution. By
failing to pose this question, the Council seems to imply a positive answer.
The distinction between "business method" and "invention which implements a business
method" is a common technique for circumventing Art 52 EPC.
The question of how the "invention" is expressed has never been relevant, nor has the
distinction between more or less human-readable descriptions of programs. This
subsentence serves no regulatory purpose, apart from insinuating that Art 52(2)c EPC
should be interpreted in a way that makes it meaningless.
"inventions involving ... business methods ..., which implement ..., shall not be
is syntactically ambiguous but probably means that "business method inventions" are
patentable, if they "produce a further technical effect".
The term "normal physical interactions between a program and a computer" means
about as much as "normal physical interactions between a recipe and a cook".
In 2000, EPO itself has criticised this wording and explained that it was merely a
wordplay temporarily used in the IBM decision of 1998 in order to circumvent the
European Patent Convention, in anticipation of a change of law that would render it
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 Board of Appeals 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.
This amendment fixes the errors while trying to stay as close to the original wording as
Article 5 paragraph 2
2. A claim to a computer program, either
on its own or on a carrier, shall not be
allowed unless that program would, when
loaded and executed in a programmable
computer, programmable computer
network or other programmable
apparatus, put into force a product or
process claimed in the same patent
application in accordance with
2. A patent claim to a computer
program, either on its own or on a
carrier, shall not be allowed.
It is contradictory to say that computer programs can not be inventions and yet can be
objects of patent claims. This is why the Commission also did not allow program claims
in its original proposal.
The condition after "unless" in the Council version is always true, provided that the
patent application was properly drafted. The Council amendment appears to pretend
that, while it is allowing program claims, it really only means to allow process claims,
and that the program claims are really included -- in defiance of the logic of the patent
system -- as a kind of additional enforcement tool in cases where the inventor did not
invent software as such but some kind of technical process beyond software.
This however would mean that the inventor could obtain a monopoly on something which
he did not invent and which, in most cases, will be neither new nor non-obvious nor even
original. Such a monopoly would moreover be economically undesirable. There is no
good rationale for allowing anyone, not even automobile makers, to control the market of
software publishing with property claims based on anything other than copyright.
It must suffice that the /user/ of a computer-aided automobile engineering invention
needs to obtain a patent license, regardless of which software he uses. In practise, this
usually does suffice. The only case where program claims would really perform an
economic function is in the software industry, where the computer program as such
would constitute the "invention"
The effect of allowing program claims is to make the publication of a program which can
express the underlying invention a direct patent infringement -- regardless of how in fact
the program would be used.
This would mean
* the program would be unusable for legitimate discussion and non-commercial
experimentation, normally encouraged in patent law.
* the program would be unusable for legitimate purposes other than those specified in
the patent application -- for example, a patented program method for predicting
automotive engine dynamics could not be used to predict stock-market behaviour (and
separate amendments saying that this is not infringement will not help, because such
claims cover the distribution of said program and not only the use).
* EU companies would be forbidden to use the program method to compete against
foreign companies overseas in territories where the patent was not in force.
Article 5.2 (b) (new)
2b. The creation, publication or
distribution of information can never
constitute a patent infringement.
This amendment does not make any patents invalid, rather it limits the ways in which a
patent owner can enforce his patents.
Freedom of publication, as stipulated in Art 11 of the European Convention on Human
Rights (ECHR), can be limited by copyright but not by patents. Copyright provides a
narrow exclusion scope which already takes the freedom interests of publishers into
Patents allow for much broader, more sweeping exclusions and involve slow and costly
legal procedures. The use of patents as a limit on the freedom of publication was
traditionally never intended and can not be justified today in view of the increased
interest of today's information society in freedom of publication.
Article 6 (a) (new)
Wherever the use of a patented
technique is necessary in order to
ensure interoperability between two
different data processing systems, in
the sense that no equally efficient and
equally effective alternative non-
patented means of achieving such
interoperability between them is
available, such use is not considered
to be a patent infringement, nor is the
development, testing, making,
offering for sale or licence, or
importation of programs making such
use of a patented technique to be
considered a patent infringement.
Interoperability of data processing systems (e.g. computers) lies at the foundation of the
information economy and allows for fair competition by all players large and small.
Article 6 of the Council only refers to the exemption provided for by the Copyright
directive. This means that a software developer is allowed to find out how to make his
data processing system interoperable with that of a competitor, but afterwards he cannot
necessarily use his gained knowledge, since that could be covered by patents.
This amendment makes sure that patents also cannot be used to prevent interoperability.
It was passed in an almost identical form by ITRE and JURI prior to the first reading
("data processing systems" read "computer systems or networks"). In first reading, a
more sweeping version of this amendment was passed (with 393 vs 35 votes), which
appeared as Article 9 in the consolidated version.
The expression "for the sole purpose" reverts to the spirit of the original ITRE/JURI
version of the interoperability exemption (which is more limited), which was also
supported by Luxembourg and several others in the Council (but didn't make it).
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/EC 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 (1986-1994) 1. 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 that Article, patent rights
should be available and patent rights
enjoyable without discrimination as to the
field of technology. These principles
should accordingly apply to computer-
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/EC 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 (1986-1994) 1. 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 that Article,
patent rights should be available and
patent rights enjoyable 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
uncontrollable 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.
It must be made 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 lobbying of the US government last year against Art 27
TRIPS, on the account that it excludes business method patents, which the US
government wants to mandate by the new Substantive Patent Law Treaty draft.
In its first reading, Parliament deleted this recital, and therefore the amendment that
proposed the above change was not voted upon. Deletion is better than keeping the
original, but clarification regarding the applicability and interpretation of the TRIPs
agreement is better.
(7) Under the Convention on the Grant of
European Patents signed in Munich on 5
October 1973 (European Patent
Convention) 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 the above subject-matter or activities as
such, because the said subject-matter and
activities as such do not belong to a field
(7) 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 applies because the said
subject-matter and activities do not
belong to a field of technology.
Art 52 EPC says that programs for computers etc are not inventions in the sense of patent
law, i.e. that a system consisting of generic computing hardware and some combination
of calculation rules operating on it can not form the object of a patent. It does not say
that such systems can be patented by declaring them to be "not as such" or "technical".
This amendment reconfirms Art 52 EPC. Note that the exclusion of programs for
computers is not an exception, it is part of the rule for defining what an "invention" is.
This amendment corresponds to recital 7 in the consolidated text of the EP's first
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
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 corollaries of
the patent system such as restriction
of creative freedom, users´ rights or
legal insecurity and anti-competitive
effects must be kept within reasonable
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 statements in legislation.
In accordance with Council Directive
91/250/EEC of 14 May 1991 on the legal
protection of computer programs, 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 individual creations based
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.
It is a condition for inventions in general
that, in order to involve an inventive step,
they should make a technical
contribution to the state of the art.
It is a condition for inventions in
general that they must make a
technical contribution to the state of
the art. The technical contribution
must be new and not obvious to the
person skilled in the art. If there is no
technical contribution, there is no
patentable subject matter and no
This amendments was newly inserted by the Council. It attempts to further codify the
EPO's "technical contribution in the inventive step" doctrine. What one invents is his
contribution to the state of the art, and for this contribution to be patentable it has to
(among other things) involve an inventive step. Not the other way round.
(13) Accordingly, although a computer-
implemented invention belongs to a field
of technology, where it 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, it will lack an
inventive step and thus will not be
(13) Accordingly, an innovation that
does not make a technical contribution
to the state of the art is not an
invention within the meaning of
The Council 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 the amendment to article 4.
(16) Furthermore, an algorithm is
inherently non-technical and therefore
cannot constitute a technical invention.
Nonetheless, a method involving the use
of an algorithm might be patentable
provided that the method is used to solve
a technical problem. However, any patent
granted for such a method should not
monopolise the algorithm itself or its use
in contexts not foreseen in the patent.
(16) Furthermore, an algorithm is
inherently non-technical and therefore
cannot constitute a technical invention.
The nature of the problem solved should be irrelevant to patentability. It's the nature of
the solution that counts. Problems are not invented, but solutions are, and it's the
invention that must be technical (or have technical character).
(19) 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 susceptible of
Similarly to Council recital 13, this amendment claims that there are non-technical
inventions. See the justification under the amendment to recital 13 for more information.
Article 4 paragraph 3 (new)
3. Computer-aided inventions are not
considered to make a technical
contribution merely because they
make better use of data processing
resources such as processing time or
This amendment reflects current case law in Germany, and a similar decision in the UK
case 'Gale's Application'.
In the words of the justices of the German Federal Patent Court (BPatG, decision of 26.
March 2002, 17 W (pat) 69/98):
"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".
In order for any invention to be considered
as patentable it should have a technical
character, and thus belong to a field of
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.
The Council 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.