26 June 2002

Hilary Pearson

The European Commission has been considering harmonisation of patent law in the Community, and stated there is a need for harmonisation of the patentability of computer programs and software-related inventions after a consultation process showed general agreement that the present legal position on the patentability of software was unclear and therefore unsatisfactory.

On 20 February 2002 the Commission produced a draft Directive on the patentability of computer-implemented inventions. A copy can be found at http://www.europa.eu.int/comm/internal_market/en/indprop/com02-92en.pdf with a set of frequently asked questions at http://www.europa.eu.int/comm/internal_market/en/indprop/02-32.htm.

The draft is prefaced by an "Explanatory Memorandum", which gives valuable insights into the Commission's thinking. The paragraph headed "The approach adopted" summarises the Commission's desired outcome; harmonisation "while avoiding any sudden change in the legal position" (page 11). Adaptations to the law to deal with new technologies should be based on the existing law as it has developed historically, which includes the exclusion of software and business methods "as such" from patentability and requires a "technical contribution". The US practice of allowing business method patents without such a requirement seems to be regarded with suspicion.

The important provisions of the draft Directive are:

Article 2

This contains two definitions, and both are critical to the operation of the proposed directive as they do not appear in the EPC and are an attempt to summarise the case law.

The first is for "computer-implemented invention":

"…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"

This definition is intended to cover inventions implemented on a computer by means of software. The reference to "prima facie" novel features will strike any patent lawyer as strange and full of potential for uncertainty. The Commission explains that this was intended to convey that the "novelty" of the invention need not reside in a "technical" feature. The qualifier "prima facie" is stated to have been used to indicate that it is not necessary to establish actual novelty to determine whether an invention falls within this definition.

The second definition is of "technical contribution". The difficulty with this requirement which has been imported into the EPC via EPO case law is determining what is "technical". The Commission leaves the problem unsolved. The only reference to the meaning of the term is to be found in the FAQs document, (which has no legal force):

"It would not be possible for a legal text such as a Directive to attempt to spell out in find detail what is meant by "technical", because the very nature of the patent system is to protect what is novel, and therefore not previously known. In practice the courts will determine in individual cases what is or is not encompassed within the definition."

Leaving the determination of this critical issue to the national courts will probably mean that they will go on doing whatever they were doing before the Directive, so there will be no effective harmonisation.

Article 3

This provides that computer-implemented inventions must be treated as belonging to a "field of technology", and therefore coming within the provisions of GATT-TRIPS.

Article 4

This article is the heart of the draft directive as it sets out the requirements for patentability. In particular, it makes it clear that the "technical contribution" is an inventive step requirement.

Section 3 requires that the technical contribution be assessed by:

"consideration of the difference between the scope of the patent claim considered as a whole, elements of which may comprise both technical and non-technical features, and the state of the art."

Together, these provisions have the effect of eliminating from patentability any software or business methods unless there is also a technical element to the non-obvious improvement over the prior art made by the claimed invention. Mere implementation of a business method on a standard computer will not be enough, and the specification will have to identify and disclose how to perform this technical contribution. This seems to be in line with the recent Improved Pensions Benefit System decision.

Although the draft makes no attempt to define what is "technical" about a "technical contribution", the explanation is a little bolder. It refers to the jurisprudence of the EPO, saying that a technical contribution may result from

  • the problem underlying, and solved by, the claimed instruction;
  • the means, that is the technical features, constituting the solution of the underlying problem;
  • the effects achieved in the solution of the underlying problem;
  • the need for technical considerations to arrive at the computer implemented invention as claimed.

However, this still leaves open the meaning of "technical", with all the problems that entails.

Article 5

This provides that computer-related inventions may be claimed as a product or process, giving examples of each. In itself, this is uncontroversial. It is what is omitted that is significant; namely, claims to the program on a carrier, as have been allowed by the EPO, for example in the IBM cases, T 0935/97 and T 1173/97. The Commission's explanation acknowledges that this proposal for the Directive does not follow EPO practice without giving any reason for taking this course (perhaps a sop to the anti-patent lobby), but fails to deal with the practical problems that this proposed divergence between EU law and EPO practice would cause.

Article 6

This provides that the provisions of the Software Directive (91/250/EEC), which deals with copyright protection for software, shall not be affected by patent protection. This would mean, for example, that those acts of decompilation and reverse engineering of software for interoperability purposes permitted under the Software Directive could not be actionable infringement of any patent relating to the software.

This Directive seems likely to have a rough road ahead in the legislative process. France has already announced that it is opposed to these proposals as too liberal, while it is likely that both sides of industry will indulge in an extensive lobbying effort, similar to that when the Software Directive was being considered. If it were enacted in its present form, as discussed above it seems likely to pose more problems that it solves. Ideally, any reform of the law should be in the form of an amendment to the EPC, failing that this should await the institution of a Community Patent, when at least there will be a central court for patent cases deciding on what is "technical".