Statement of the EU Commission on the EU Council's Decision Concerning the Draft Directive on the Patentability of CII.
On March 10, 2005, the Secretary-General of the European Commission has sent to Mr Javier Solana, Secretary-General/High Representative, a Communication COM(2005) 83 final from the Commission to the European Parliament pursuant to the second subparagraph of Article 251(2) of the EC Treaty concerning the common position of the Council on the adoption of a directive of the European Parliament and Council on the patentability of computer-implemented inventions. The Commission in particular provides remarks as follows:
"[...]3- COMMENTS ON THE COMMON POSITION
3.1 General remarks
The Council, acting by qualified majority, has adopted a common position which incorporates the substance of some 25 of Parliament’s amendments at first reading. The Commission has indicated that it accepts the common position, even though this differs from the Commission’s original proposal in certain respects. In general, the Commission believes that the common position strikes an acceptable balance between the interests of right holders and those of competitors and consumers (including in the open source community). This balance is further safeguarded by the new requirements in Article 7 for the Commission to monitor the impact of computer-implemented inventions in particular on small and medium-sized enterprises and on the open source community.
As far as the Commission is concerned, the directive continues to address the key objective stated in the explanatory memorandum of the Commission’s proposal, namely the harmonisation of patent law between the Member States and the resolution of legal uncertainty in this field. It is crucial to note that there is to date no Community legislative instrument which affects general patent law either in a horizontal manner or specifically relating to computer-implemented inventions. The adoption of this directive would therefore have the effect of bringing patent law in this field, for the very first time, explicitly within Community jurisdiction.
A failure to adopt a directive would prevent Community institutions from exercising control in this strategic area of the European economy, which would thus remain within the remit only of national patent offices and courts and the European Patent Office in Munich.
3.1.1 Computer program product claims
Although the Commission’s proposal did not explicitly permit claims on computer programs on their own or on carriers, the Commission has accepted Article 5(2) of the common position as this has to be understood as relating to the enforceability of (existing) patent rights and not to extending the scope of patentability. This is reinforced by the explicit link with Article 5 (1) as mentioned below. To the extent that the relationship between Article 5(2) and the exclusion of computer programs as such (as is explicitly laid out in Article 4(1)) is open to differing interpretations, the text may need further clarification.
Acts relating to computer programs on their own or on carriers could be subject to proceedings for contributory infringement even without provisions equivalent to Article 5(2). The effect of Article 5(2) is thus to facilitate enforcement of legitimate rights by ensuring that such acts may constitute direct, rather than just contributory, infringements. This is particularly important in cases of infringements across national boundaries as Member States’ courts do not have jurisdiction over contributory infringements occurring outside their national territory. I n any case, the final part of Article 5(2) makes clear that the claim on the computer program on its own or on a carrier has to put in force a patentable product or process claimed in the same patent application (and falling within the scope of Article 5(1)). This ensures that Article 5(2) cannot constitute protection equivalent to the patentability of computer programs as such, a reading which is furthermore confirmed by the more explicit language of the common position, in particular of Article 4 paragraphs 1 and 2.
3.1.2. Interoperability
The Commission is strongly committed to the promotion of interoperability as a means of fostering innovation and competition. This is consistent with the objectives of the Commission’s proposal to help safeguard investment in inventions which are new, inventive and industrially applicable. It is important to note that the requirement for sufficient disclosure of a patented invention may facilitate access to information useful in achieving interoperability of computer-implemented inventions.
The Commission affirmed its commitment to the policy objective of promoting interoperability and fostering innovation by explicitly preserving in Article 6 existing interoperability exceptions under copyright law
The Commission believes that the Council common position remains consistent with these objectives. Equivalent conditions for patentability have been maintained in new Articles 3 and 4 (read in conjunction with Article 2). As expressed in a statement by the Commission to be entered in the minutes of the Council adopting the common position (see below), the Commission considers that Article 6, read in conjunction with Recital 22, permits any acts as described by Articles 5 and 6 of Directive 91/250/EEC on the legal protection of computer programs by copyright, including any acts necessary to ensure interoperability, without the need for authorisation from the patent’s right holder.
The Commission furthermore welcomes the fact that safeguards for interoperability have been strengthened in Article 8(d) and (g) in terms of the requirements on the Commission to report on how the situation regarding interoperability has been affected by the passage of the directive.
In the light of the Community objective of promoting interoperability, the Commission intends to facilitate the approximation of the Council and Parliament positions drawing on amendments put forward by both institutions in first reading.
Furthermore, Recital 21 recalls that a dominant supplier who refuses to allow the use of a patented technique to achieve interoperability is subject to the application of competition rules and in particular Articles 81 and 82 of the Treaty. The application of these Articles therefore contributes to achieving the objectives laid out above, although it is of course important to note that competition law on its own cannot solve all potential problems in this area. [...]"
I think that any claims directed to computer program products are somewhat problematic not only because of they might put 'free speech' at risk but also because I am convinced that no software code taken as such has any attributable meaning in terms of software functionality unless a certain type of processor is assigned. If someone would act to download some arbitrary file from the Internet you cannot - in any meaningful strict sense - without further secondary intelligence determine whether or not this file can act as a piece of software that exhibits a certain kind of functionality infringing a certain patent.
Only if there is some additional information saying that such file is intended e.g. for execution on an Intel Pentium Processor or on some other named processor, a judge presiding over infringement proceedings could be able to determine the functionality of the file taken as software in order to compare it with the teaching in a patent claim. There is no escape from the requirement of contributory infringement to show that the code is not only suited but also designated to exhibit a certain infringing functionality; it is in fact essentially the same game as in case of contributory infringement.
As an improvement of the trans-border enforceability of contributory infringements should be seen as the main issue for allowing claims on computer program product claims I would prefer to amend the law on infringement accordingly instead of fostering such kind of patent claims effectively blurring the semantics of patent claims.
Concerning the problems related to interoperability I would like to refer to my earlier posting here.
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
Communication COM(2005) 83 final from the Commission to the European Parliament pursuant to the second subparagraph of Article 251(2) of the EC Treaty concerning the common position of the Council on the adoption of a directive of the European Parliament and Council on the patentability of computer-implemented inventions. The Commission in particular provides remarks as follows:
my earlier posting here.
