The TRIPs Treaty and Software Patents

A Copyrightable Field of Technology?
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European patent authorities often cite the TRIPs treaty as a reason for making computer programs and business methods patentable and for making such patents enforcable in the most indecent ways. This reasoning is fallacious and easy to refute. It appears moreover that the European patent establishment itself is systematically violating the TRIPs treaty.

The Treaty on Trade Related Aspects of Intellectual Property Rights (TRIPs), signed on 1993-12-15 as a constituting document of the World Trade Organisation (WTO), sets minimal rules for national intellectual property law in order to prevent member nations from using intellectual property as a hidden trade barrier against other nations.

Article 27 has often been construed by patent lawyers to imply that patent claims must be allowed to extend to computer programs.

Paul Hartnack, Comptroller General of the British Patent Office, commented this question at the London hearing in 1997:

Some have argued that the TRIPs agreement requires us to grant patents for software because it says "patents shall be available for any inventions in all field of technology, provided they are capable ... of industrial application". Cependant, cela dépend de la façon dont on interprète ces mots.

Is a piece of pure software an invention? La loi européenne dit que non.

Is pure software technology? Nombreux sont ceux qui pensent que non.

Is it capable of "industrial" application? Again, for much software many would say no.

TRIPs is an argument for wider protection for software. Mais la décision d'un tel renforcement doit être prise en se fondant sur des arguments économiques réfléchis. Would it be in the interests of European industry, and European consumers, to take this step?

In its ratification of GATT/TRIPs, the German legislature saw no conflict between Sec. 1(2)(3) and 1(3) of the Patent Act and Art. 27(1) of TRIPs.

In a decision of 2000, in which it rejects a claim to a computer program, the German Federal Patent Court explicitely refutes the TRIPs fallacy:

The Treaty on Trade Related Aspects of Intellectual Property Rights (TRIPs) does not entail any different judgment of patentability. Independently of the question as to in what form - directly or indirectly - the TRIPs treaty is applicable here, the application of Art 27 TRIPs would not lead to any extension of patentability here. The wording, according to which patents shall be available for inventions in all fields of technology, merely confirms the dominating view of german patent jurisprudence, according to which the concept of technology (Technik) constitutes the only usable criterion for delimiting inventions against other kinds of intellectual achievements, and therefore technicity is a precondition for patentability (the "Logikverifikation" decision of the Federal Court of Justice (BGH) sees Art 27 TRIPs as "posterior confirmation" of this jurisprudence). The exclusion provision of Art 52 (2) and (3) EPC can also not be construed to be in conflict with Art 27 TRIPs, since it is based on the notion of lacking technical character of the excluded items.

The Federal Patent Court here refers to the Dispositionsprogramm doctrine, according to which the presence or not of controllable forces of nature in the solution of the problem is the only usable criterion for delimiting the realm of patentable inventions. According to this doctrine, data processing is not a field of technology, as Gert Kolle, the leading scholar of the time on this question, explains in his much-cited analysis of the Dispositionsprogramm decision in 1977:

Automatic Data Processing (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 of free availability (Freihaltungsbedürfnis) is indicated.

This is exactly what the European Parliament has stated in its amended directive proposal:

Recital 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.

Article 2b.
"technical contribution", also called "invention", means a contribution to the state of the art in technical field. The technical character of the contribution is one of the four requirements for patentability. Additionally, to deserve a patent, the technical contribution has to be new, non-obvious, and susceptible of industrial application. The use of natural forces to control physical effects beyond the digital representation of information belongs to a technical field. The processing, handling, and presentation of information do not belong to a technical field, even where technical devices are employed for such purposes.

Article 3a.
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.

  1. Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971).
  2. Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.
Subject to the provisions of paragraphs 2 and 3, 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.[1]

Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.

It should be noted that the text explicitely encourages differing interpretations of some of the abstract terms used therein, such as "non-obviousness" and "industrial application".

While the paragraph forbids "discrimination" in the interest of free and equal trading conditions, it does not mandate a specific invention concept. It could however be construed to favor an invention concept which is favorable to free trade and economic development and in which the terms "technology", "industry" etc are not empty words.

Even within the realm of patentable "technology", Art 27(1) can hardly be interpreted as a rigid framework that outlaws all fine-tuning. If it was to be interpreted in this rigid way, as some patent lawyers propose, U.S. law would fall afoul of TRIPs in at least four areas: pharmaceuticals [35 USC 155,156, term extensions; 35 USC 271(e), experimental use]; biotechnology processes [35 USC 103(b), providing special non-obviousness standard]; medical and surgical procedures [35 USC 287(c), limiting remedies], and methods of doing business [35 USC 273(a)(3), providing prior user rights].

Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

This clause is cited by patent owner lobbies whenever anyone tries to restrict the rights of patent owners, no matter whether in "reasonable" or "unreasonable" ways.

see Interoperability and the Software Patents Directive: What Degree of Exemption is Needed

This is important to know, because it renders frequently recurring proposals pointless, such as that of Amazon's CEO Jeff Bezos, who advocates reducing the lifetime of software patents to 3-5 years.
The TRIPs treaty has no time limitation. It is valid as long as the World Trade Organisation (WTO) as a whole can not agree to change it. The organisation of WTO is far removed from democratic participation, and many WTO members are dictatorial states. If any country wants to opt out of TRIPs, it will have to leave WTO, thereby risking a collapse of its exporting industries. The treaty was negotiated in backrooms between ministerial officials, and for most of the world's languages translations do not even exist. All these considerations make it imperative to interpret the TRIPs treaty with greatest care and to make extensive use of the flexibility which it allows, so as to achieve a fair balance of rights and obligations under the overall objective of Free Trade which the treaty serves.

The treaty drafters were aware of these problems. In the General Provisions, they included articles such as the following:

Article 7

Objectives

The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

Article 8

Principles

  1. Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement.
  2. Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

Software patents are well known to be a disaster in terms of innovation, competition and balance of rights. Patents on business methods moreover systematically serve to restrain trade, and these restrictions appear unreasonable to most people in the field.

TRIPs provides meta-rules for patent law, designed to promote free trade and reduce the leverage of governments in favoring domestic industries over foreign ones. It says something about how laws should be structured, e.g. "no discrimination in favor of specific local industries", "no arbitrary limitation on enforcability". It thereby encourages limitations that are based on systematic considerations, e.g. weighing patentee rights against other rights of equal weight, such as copyright property (Art 10 TRIPs), freedom of publication (Art 10 European Convention of Human Rights ECHR) or the right of access to communication standards.

It is very important for any patent law project to concretise the abstract rules of the TRIPs treaty. Any law project that fails to do so can not be claimed to serve the purpose of clarification.

While economic policies should be justified in terms of the abstract concepts laid down in TRIPs, they can not be derived from TRIPs alone.

It is poor draftsmanship to copy&paste abstract doctrines from TRIPs into European laws, which are supposed to provide guidance at a more concrete level. Art 52(1) EPC was revised in this ill-advised way by the Diplomatic Conference of 2000, and the European Parliament's rapporteur on the software patent directive project, Arlene McCarthy MEP, proposed to directly write Art 30 TRIPs into Art 6a of the Directive. Such actions do not only make make the proposed laws unclear. They also deprive European of maneuvering freedom in future renegotiations of TRIPs, which may well be needed in order to keep the TRIPs framework workable at all.

TRIPs was negotiated by delegations that represented the dominant interests of another era. Software was largely considered unpatentable, and opensource development and distribution was almost unknown. TRIPs should be interpreted in a way that does not benefit some production technologies, business models, and industries at the expense of others. The important thing is to enhance productivity in all industries.

Many limits of the TRIPs system, at least in its more rigid interpretations, have become so apparent, that even the Americans, who were the chief promoters of the TRIPs treaty, are tailoring it to their advantage and thereby arguably violating some of its provisions.

There is now a lot less worry that the US might make a complaint about any aspects of the patent system in the EU, because the EU would hit straight back with complaints about US preference in the US patent system.

Any judgments coming out of such a row would be likely to open a sufficient number of politically difficult issues on both sides of the Atlantic that nobody wants to go there.

The European Patent office started allowing program claims in 1998. In the justifying decisions T 1173/97 and T 935/97 it is stated:

Programs for computers could be considered as patentable inventions if they have a technical character.

Computer programs, as described in program claims granted by the EPO since 1998, are information structures, consisting of symbolic entities only. Any "technical character" which they might have can be found only on the meaning side of the symbolic entities. Likewise one could speak of the "technical character" of a set of chemical formulas, of a collection of construction drawings or even of a science-fiction novel, and empower every patent owner to monopolise the distribution of any information which describes his "invention".

However the EPO does not go as far as this. Instead it creates a special class of "inventions" which can be claimed in the form of information structures. These structures, since 2000 called "computer-implemented inventions" by the EPO, can be appropriated both by copyright and by patents.

Computer programs are thus "protected as literary works" (i.e. subjected to copyright), as stipulated by Art 10 TRIPs, and, in addition, patentable as technical inventions.

This alone is arguably a violation of TRIPs. Normally one intellectual achievement should not fall under two different regimes at the same time, and Art 10 states that computer programs fall under copyright. If they are "protected both as literary works and as inventions" then they are in effect no longer "protected as literary works", since it is a characteristic of copyrighted works that the ideas embodied therein remain free. If both copyright and patents apply to software, property that was acquired one regime is exposed to devaluation by the other.

The EPO and the European Commission have still gone further in violating TRIPs.

Starting from the creation of a special class of "computer-implemented inventions" which can be claimed in a special, usually impermissible way (namely in the form of an information structure describing the "invention"), they have endeavored to create a body of sui generis software patent law.

In 2000, both the EPO and the European Commission quickly adopted the doctrines of a new decision by the EPO's Technical Board of Appeal, called Controlling Pension Benefits System. This decision establishes special rules for examining the technical character of "computer-implemented inventions", such as assessing the "claim as a whole" rather than the achievement behind this claim, thereby making any computer program pass the requirement of technical invention, and, instead of this voided requirement, establishing a new requirement of "technical contribution in the inventive step", which has no basis in Art 27 TRIPs.

The Working Party of the Council of the European Union went even one step further in its secret papers of November 2002 and January 2004. They leave it to the patent applicant to decide which of the two regimes he wants to see applied to his achievement: the standard doctrines of patent law or the sui generis doctrines for "computer-implemented inventions".

By contrast, the European Parliament has proposed to clarify TRIPs by stating, inter alia, that data processing (informatics) is not just another discipline applied natural science ("field of technology") but rather a layer of abstraction, applicable to all fields of natural as well as social science. These clarifications beautifully integrate Art 10, Art 27 and the EPC. The Parliament's proposals are ignored and unreasonably discredited by the community of patent administrators and corporate patent lawyers, which is, as of spring 2004, continuing to monopolise the decisionmaking at the European Patent Office (EPO), the European Council (Consilium) and the European Commission (CEC).

In summary it can be said that the European patent establishment is

  1. refusing to clarify and concretise the meaning of the TRIPs treaty;
  2. wrongly equating the TRIPs treaty with "US practise", using threats of alleged TRIPs-incompatibility for purposes of fostering Fear, Uncertainty and Distrust (FUD);
  3. trying to impose a sui generis software patent regime on Europe which is incompatible with the TRIPs treaty.
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