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Saturday, May 07, 2005

Ms. Piia-Noora Kauppi MEP on Patentability of Computer-Implemented Inventions.

• Proposed Amendment 1 - Recital 5a new:

  "(a) The rules of the Convention on the Grant of European Patents signed in Munich on 5 October 1973, and in particular Article 52 thereof concerning the limits to patentability, should be confirmed and clarified."

  It should be noted that the European Patent Convention establishes a European Patent Organisation which is legally independent from the EU. The EU simply has no power to "confirm and clarify" any rules of the EPC.
• Proposed Amendment 3 - Recital 8a new:

  "8(a) The European Patent Convention provides that the European Patent Office is supervised by the Administrative Council of the European Patent Organisation, and that the President of the European Patent Office is responsible for its activities to the Administrative Council. The Administrative Council is composed of representatives of the Contracting States of the European Patent Convention, a clear majority of which is formed by Member States. These representatives shall exercise such measures within their authority to achieve compliance by the European Patent Office with this directive."

  This is a quite affronting approach to implement something like an unfriendly take-over of the EPO by the EU via the back door: Although the EPO is in legal terms completely independent of the EU, the voting power of the EU Member States in the Administrative Council is set to be used for gaining effective political control over the EPO. However, Ms. Kauppi should not forget that the Administrative Council merely decides on things like amendments to the Implementation Regulation of the EPC. The big deals are reserved for a Diplomatic Conference of all EPC Member States including countries like Switzerland which are not Member of the EU. For an earlier failed approach of an unfriendly take-over of the EPO by the EU through the front door, see here.
• Proposed Amendment 5 - Recital 11:

  "(11) 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. In order to be patentable, inventions in general and inventions which can be realized by a computer program in particular must be susceptible of industrial application, new and involve an inventive step."

  Up to now, there is no legal term "innovation" in patent law. I am seriously in doubt whether it makes sense to add additional complexity to patent law by introducing the concept of "innovation" as opposed to "invention". The other assertions of this recital are clearly redundant; of course, in existing patent law, every patentable invention must be susceptible of industrial application, be new and must also involve an inventive step.
• Proposed Amendment 6 - Recital 13:

  "(13) Accordingly, an innovation that does not make a technical contribution to the state of the art is not an invention in the sense of the patent law."

  See above: Introducing the concept of "innovation" into patent law surely will create more work for judges and members of the Boards of Appeal of the EPO but will not clarify the meaning of the law.
• Proposed Amendment 7 - Recital 16:

  "To be deleted from the EU Council's version: '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.'
  
  Justification given by Ms. Kauppi: '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).'

  Every method - whether computer-implemented or not - makes somehow use of an 'algorithm'. Moreover, Ms. Kauppi might not have understood the nature of the problem-solution approach which is a cornerstone of European patent practise at the EPO and also before many national Patent Offices. A solution can be specified only with regard to a problem posed, and the relationship between problem and solution can tell us a lot about the invention bridging both of them.
• Proposed Amendment 9 - Recital 17a new:

  "17(a) Member States shall ensure that the description shall disclose the invention as claimed in such terms that the technical solution can be understood, and state any advantageous effects of the invention with reference to the background art."

  There is since ever a clause in patent law that the invention must be disclosed in sufficient detail such that the expert skilled in the art can work it. With regard to Ms. Kauppi's proposal, there is another problem: The "background art" is not (completely) known at the time of drafting an application and, hence, cannot fully be taken into consideration.
• Proposed Amendment 10 - Recital 17b new:

  "17(b) It would aid in the diffusion of information and the establishment of a comprehensive database of prior art, if patent applicants could, where feasible, but independently of the need for the purposes of sufficiency of disclosure to do so, file with each patent application relating to a computer-implemented invention a well-functioning and well documented reference implementation of a program suitable for use in implementing the invention, which can be made available to the public at the same time as the publication of the description. "

  So, well, on a voluntary basis an applicant is also today free to publish "a well-functioning and well documented reference implementation of a program suitable for use in implementing the invention". This can cheaply be done e.g. by utilising the computer systems of an Internet hosting provider. What I do not see are the specific advantages of creating an obligation for Patent Offices to act as a hosting service provider.
• Proposed Amendment 12 - Recital 21a new:

  "21(a) The dominant supplier shall not be able to refuse to allow the use of a patented technique which is needed for the sole purpose of ensuring interoperability of two different computer systems or networks so as to allow communication and exchange of data content between them."

  This is a quite broad general clause the problems of which seem to lie in the gory details. What does e.g. mean the word "sole" in this recital clause? Are there techniques at all for this "sole" purposes? What if they have other side effects? Are those side effects to be neglected? If so, why?
• Proposed Amendment 13 - Article 2(a):

  "2(a) "computer-implemented invention" means an invention within the meaning of the European Patent Convention, the performance of which involves the use of a computer, computer network or programmable apparatus."

  As I already mentioned earlier in this posting, the European Patent Convention is - in legal terms - "off limits" for the EU. I don't think that it would be a wise idea to make secondary EU Law like, in this case, a Directive on the patentability of computer-implemented inventions, dependent on any other Convention which stands completely outside the system of the EU Law.
• Proposed Amendment 14 - Article 2(b):

  "2(b) "technical contribution", also called "invention", means a contribution to the state of the art in a 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. The method of data processing by using a computer, network or other programmable apparatus is not considered to belong to a field of technology."

  I disagree if Ms. Kauppi says that "technical contribution" is a synonym for "invention". An invention belongs to the realm of the intangibles and conveys a certain technical teaching. The technical contribution related to this invention says something about the relationship between prior art and the invention. Furthermore, I do not understand how a "technical contribution" can be susceptible of industrial application. Only an invention can have this susceptibility. The sub-clauses "The processing, handling, and presentation of information do not belong to a technical field, even where technical devices are employed for such purposes. The method of data processing by using a computer, network or other programmable apparatus is not considered to belong to a field of technology." are really overkill - they might well be construed as if each and every technical teaching which comprises the processing, handling, or presentation of information is automatically rendered non-patentable. For example, a good old analogue TV set clearly is a device wherein a lot of effects are caused by controllable natural forces. Now, let us have a look at the transmission of colour signals in accordance with the PAL standard utilising the above-mentioned analogue TV set without any digital circuitry. According to Ms. Kauppi's proposal, the PAL method would not have been patentable because the analogue video data processed by discrete analogue electronic components can be seen as processing or handling of information. With other words, Ms. Kauppi's proposal in the effect is nothing else than an implementation of Stallman's Utopia where no signal-processing devices or methods are patentable whatsoever.
• Proposed Amendment 15 - Article 2c new:

  "2c 'field of technology' means an industrial application domain requiring the use of controllable forces of nature to achieve predictable results. 'Technical' means 'belonging to a field of technology'"

  So, what is an "industrial application domain" - are there such domains at all not requiring the use of controllable forces of nature to achieve predictable results?
• Proposed Amendment 16 - Article 2d new:

  "2(d) The production and distribution of information goods is not an 'industry' in the sense of patent law."

  Ms. Kauppi's Justification:

  "Information goods can be reproduced on millions of computers within seconds at near to zero cost. More than material goods, information goods are suitable for production by freelancers. The economics differ, and the business models for information goods tend to be closer to those of the service sector than of the classical "industry" sector. This amendment clarifies, using a negative definition, a central term of Art 27 TRIPs which has been used in several provisions and amendments within this directive. If the term is to retain any limiting meaning at all, production information goods can not fall within it."

  What are "information goods"? Does that mean that inventions concerning data storage media like CDs or DVDs are no longer patentable? Sounds quite ridiculous.
• Proposed Amendment 18 - Article 3:

  "(3) In order to be patentable, a computer-implemented invention must be susceptible of industrial application and make a technical contribution. The technical contribution must be new and involve an inventive step."

  In Amendment 14, Ms. Kauppi had suggested that "technical contribution" is synonym to "invention". Now, an invention "makes" a technical contribution. There are a lot of flaws in this logic. What does Ms. Kauppi mean when she proposes that the "technical contribution" must be "new" and "involve an inventive step"?
• Proposed Amendment 19 - Article 3b new:

  "3(b) The application for a patent must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art."

  Nothing new!
• Proposed Amendment 20 - Article 4.1:

  "4.1 Programs for computers are not inventions in the sense of patent law."

  What is the meaning thereof? The EPC says, "computer programs as such" are not (patentable) inventions. Ms. Kauppi has deliberately omitted the word "as such". Why? To which effect? Of course, an invention can never be identical with a program - the first is an entity out of the realm of intangibles, the latter is a data structure fixed on a data carrier or travelling over a data channel. This clause sounds as if every invention implemented by means of a program should be seen as unpatentable but then there would be no need to further talk about patentability of computer-implemented inventions.
• Proposed Amendment 21 - Article 4.1a new:

  "4.1(a) A computer program is a solution of a problem by calculation with the abstract entities of a generic data processing machine, such as input, output, processor, memory, storage as well as interfaces for information exchange with external systems and human users. A computer program may take various forms, e.g. a computing process, an algorithm, or a text recorded on a medium. If the contribution to the known art resides solely in a computer program then the subject matter is not patentable in whatever manner it may be presented in the claims."

  I do not think that a computer program is the solution of any problem. It might be a codified text or data structure dedicated to be run on a processor, both taken together representing the solution of a problem. This is something entirely different. Ms. Kauppi's definition would put a 'program' purposefully nearby to the realm of the intangibles where the inventions reside. This is, however, definitively not true.
• Proposed Amendment 22 - Article 4.2a new:

  "4.2a Member States shall ensure that data processing solutions are not considered to be patentable inventions merely because they improve efficiency in the use of resources within data processing systems."

  Why such clause? This is an unjustified discrimination against inventions making data or signal processing devices more efficient.
• Proposed Amendment 23 - Article 5.1:

  "5.1. Member States shall ensure that a computer-implemented invention may be claimed only as a product, that is as a programmed (deleted) apparatus, or as a process carried out by such an apparatus (deleted)."

  Proposed Amendment 24 - Article 5.2:

  "5.2 A patent claim to a computer program, either on its own or on a carrier, shall not be allowed. "

  I am not a friend of computer program product claims but probably on the basis of different motivations than Ms. Kauppi.
• Proposed Amendment 25 - Article 5a new:

  "5(a) Member States shall ensure that the distribution and publication of information, in whatever form, can never constitute direct or indirect infringement of a patent."

  Ms. Kauppi's Justification: "Freedom of publication, as stipulated in Art 10 ECHR, can be limited by copyright but not by patents. Patent rights are broad and unsuited for information goods. This amendment does not make any patents invalid, rather it limits the ways in which a patent owner can enforce his patents. Such a provision should be complemented by other provisions which make sure that information patents are not granted in the first place. This amendment is a simplified and reduced version of article 7 paragraph 3 in the consolidated text of the EP’s first reading."

  What shall that mean in practice? If there is e.g. a CD digital data storage medium which implements an invention concerning the arrangement of information-carrying data tracks on a substrate. Can this patent be enforced if such a CD is brought to market with, say, music pre-recorded on it?
• Proposed Amendment 27 - Article 6a new:

  "6(a) Member States shall ensure that wherever the use of a patented technique is needed for the sole purpose of ensuring interoperability of two different computer systems or networks so as to allow communication and exchange of data content between them, such use is not considered to be a patent infringement. Member States must ensure that the court may require a patent owner to grant a licence for such use having regard to the public interest in permitting access to the patented technique, provided that a licence is not otherwise available for such use on reasonable and non-discriminatory terms and conditions."

  Again, what is the real meaning of the word "sole" in this context? Are there any situations where a patented technique (whatever that might be, why did Ms. Kauppi not write "patented invention"?) really has only a "sole" purpose? I am in doubt.
• Proposed Amendment 32 - Article 8a new:

  "8a 1. Member States shall ensure that its representatives in the Administrative Council of the European Patent Organisation take such measures within their authority to ensure that the European Patent Office only grants European patents when the requirements of the European Patent Convention have been met, in particular with respect to inventive step and technical contribution as defined in Article 2(b).
  
  2. The Council shall provide a yearly report to the European Parliament on the activities of representatives of Member States that are Contracting States to the European Patent Convention in the Administrative Council of the European Patent Organisation, and the progress that has been made to achieving the objectives set out in Article 8A.1 above.

  Ms. Kauppi's Justification:

  "This amendment recognises that the Member States are also Contracting States of the European Patent Convention and that Member States have some influence the practice of the European Patent Office, specifically with respect to maintaining high standards of examining patent applications in particular with respect to inventive step and 'technical contribution' as defined in this directive. Furthermore, this amendment requires Member States (in Council) to report to the European Parliament each year on what they have actually done to influence the EPO in this regard and on the progress that has been made towards the goal of minimising the grant of undeserving patents."

  See above my comment on proposed Amendments 1 and 3.

[Permalink]

 

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OK - this was a long (and interesting) post and I'm not going to deal with all of it but I will make a couple of points.

I agree with your analysis that some of the amendments are poorly worded, but you should not be suprised to find that we have come to 'panic-driven closing of loopholes'. The EP has little choice at this stage, because all its substantive amendments were thrown out by the Council, then the requests of member states to have the 18th May agreement reconsidered were ignored, and so was the request of the parliament to restart the process in order to have a meaningful discussion on the basic issue of exactly what should and should not be patentable.

So now we are left with the deadline for a second reading which is not really enough time to prepare finely-tuned and well-crafted amendments. The EP is doing its best in a hostile environment.

And of course they feel a need to try to plug as many loopholes as possible precisely because the EPO has gone to extraordinary legths to create loopholes by semantic re-interpretations of 'software as such' and inventing the further technical effect doctrine. If the EPC had not been stretched to encompass things it was clearly intended to exclude (computer programs) we wouldn't have the problem of trying to deal with it now.

On a couple of specific points:

1) Surely you know what an 'information good' is really? It is a document, a text, a movie file etc - information. It is not the same as a storage medium such as a CD - that is the medium upon which information goods are often delivered. If you don't like the term would you care to suggest a better one rather than trying to denigrate with rhetorical questions?

I do agree about 'sole purpoes' (of infringement) though. That is a loophole if ever I saw one.

Programs for computers are not inventions in the sense of patent law."

What is the meaning thereof? The EPC says, "computer programs as such" are not (patentable) inventions. Ms. Kauppi has deliberately omitted the word "as such". Why?

You know perfectly well why - because it has caused endless confusion and allowed the EPO to distort the meaning of art 52(2) beyond any sensible reading. Omitting it clarifies things enormously. This amendment is simple and clear. Indeed the whole directive is summed up in these few words.
 

# posted by Wookey : 24 May, 2005 04:42

 

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