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BLOG@IP::JURPatent Attorney Axel H Horns' Blog on Intellectual Property Law.
Saturday, June 25, 2005On the Borderline.On one side of the borderline between patentable "inventions", on the one hand, and non-patentable "novelties", on the other hand, we find a broad spectrum of enterprises desiring to protect their investment into R&D by utilising the patent system. Nearby to the other side of the borderline we see the camp of those groups and individuals who would like to prefer to limit the scope of the patent system as far as possible in order to establish, maintain and - if possible - expand the Intellectual Commons.In view of this situation, politics might feel encouraged to set, by majority decision, a fence equipped with a barbed wire clearly separating both areas. Patenting shall extend up to the barbed wire but no further. Located behind the fence, out of reach of the patent system, critics of the patent system see the realm of what is called "software", subject only to Copyright. Let us at first have a look at the basic principles and open questions of the Commission's Draft. The Commission had well recognised that the standard criterion of a technical character taken alone is not suitable for defining a proper borderline between "is-patentable" and "is-not-patentable". All programs, when run on a computer, are by definition technical - because a computer is a machine-, and so are able to pass this basic hurdle of being an "invention". The borderline drawn by the Commission's original wording of the Draft directive said: »Although computer-implemented inventions are considered to belong to a field of technology, in order to involve an inventive step, in common with inventions in general, they should make a technical contribution to the state of the art.In the Commission's view, if an algorithm is defined without reference to a physical environment it is inherently non-technical and cannot therefore constitute a patentable invention. And, in addition, this reference to a physical environment must not be anticipated by relevant prior art. The EU Council has even aggravated this criterion by requiring that this reference must be non-ovious. Commissioner Bolkestein, under whose authority the draft directive was drawn up kept assuring that the Draft directive is not about extending the scope of material criteria of patentability - it only is about providing clarification and stability, but it is also about reaffirming the existing bodies of case law. So far, the Commission seems to have already drawn a clear borderline by requiring a technical contribution to the state of the art which limits the circle of patentrable inventions far more than just requiring a »technical character«. Where is the remaining problem? In September 2004, at the occasion of the 12th European Patent Judges' Symposium held in Brussels,  Mr. Rocard had said in view of Commissioner Bolkestein's assertion that the scope of patentable subject matter was not to be extended by the Draft directive:»On hearing this, we were all very impressed by him and the work done, and we applauded the recitals. However, on reading the body of the document, it seemed to us - our opinion clearly being partial and open to question, but nonetheless being our view with its own merits - that the provisions of this draft directive did not actually include the restrictive definition that the commissioner claimed to be providing.«Later, again by Mr. Rocard: »Our argument, presented in the plenary session was to tell the Commissioner: "we listened and agreed with all of your arguments - both written and oral - but think that you have failed to implement them in a sufficiently precise and coherent legal system, so we have made some improvements that reflect your intentions"«It was in this context that the reference to software requiring the use of energy or material for implementation and development was reintroduced into the text during a European Parliament debate. Mr. Rocard expressis verbis had admitted that making only this form of software-related inven tions patentable is clearly problematic for companies that file a lot of patents. Finally Mr. Rocard had concluded: »We freely admit that the criterion rejected by Mr Bolkestein regarding the use of energy or material may be flawed and difficult to ascertain but it is our only option so far. We will pursue our efforts and try to be ever more precise, and provide sound reasoning with a legal and scientific basis.«In my view, Mr. Rocard's speech seems to provide some insights into the basic principles of the present debate well beyond his or his parliamentary group's positions. The intrinsic complexities of patent law make it very difficult to assess the real impact of any particular language introduced into the law books. It appears to me as if there is a wide gap between the perception of the actual effects of the Commission's language (which is largely preserved in the version as adopted by the EU Council) concerning the borderline, on the one hand, and of the restrictive clauses proposed by some MEPs, on the other hand. Patent critics might believe that the Commission's language would "open the floodgates" for an unlimited patentability by removing the fences on the borderline and the restrictive clauses proposed by MEPs just re-erect such fences in order to make sure that the political goals of the Directive process are met. On the other hand, executives as well as patent experts from the users of the patent system are utmost worried because of they have a reversed perception: The Commission's proposal is adequate, and the restrictive clauses offered by some MEPs effectively close the patent system even for a number of such inventions for which the patent system has worked well in the past without any substantial problems being reported. I am convinced that vigorous attempts of certain MEPs to "close the loopholes" for patenting software-related inventions would cause drastic side effects which would render vast fields of inventions unpatentable for which patents in the past never have caused real problems. Take, for example, the telecommunications industries. One of the more important problems when developing new technologies for cellphones is dealing with a so-called 'handover'. A handover is that what occurs when a cell phone used in a car or in a train moves out of the range of one cell and needs to connect to the next available cell. The preceding cell then hands over the connection to the stronger cell without interrupting the ongoing call. Researching and developing communication protocols for wireless cell phones including provisions for proper and reliable handovers of ongoing calls is a tedious task. The engineers have to deal with radio field strength measurements, frequency allocations and much more concepts borrowed from applied physics. However, the resulting mobile phone device being able to perform a reliable handover is essentially nothing else than a general purpose computer equipped with a certain very particular sort of periphery. Should a somewhat tricky and advantageous way of performing a handover from one cell to another be patentable? Of course, even according the original Draft of the Commission as well as according to the Draft as adopted by the EU Council the technical contribution test can be done only after the relevant prior art has been researched. So there is no general answer available so as to whether such invention would be patentable. However, if the Parliament endorsed restrictive clauses like "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."the question arises whether or not a patent judge would conclude that the entire wireless cellphone system is nothing else than a "data processing system" and having a smooth handover mechanism is merely a means to improve the use of a resource, namely the frequency spectrum, within that data processing system. Other concerns are rised by clauses like »"Industry" in the sense of patent law means commercially organised production of material goods«where patent judges might conclude that a patent directed to an invention which is embodied by an improved method for performing a handover in a mobile communications system should not be deemed to be industrally applicable because of the method as such does not produce material goods. I am convinced that such proposals as discussed
In Patent Law, an "invention" is an object of legal protection of its own kind. Not the tangible embodiment of the idea of the invention is the object of legal protection but the idea in itself underlying this embodiment. This idea is from the realm of the intangibles. The language of the patent claims used in the granted patent is merely an awkward tool to note down those features which are suitable to identify embodiments of the invention in the real world. Speaking in strict terms, even a »vehicle tyre« is not patentable despite the fact that you can see numerous granted patents where the generic clause of the patent claims is just »vehicle tyre, characterised in that ...«. The invention is always intangible; nevertheless the embodiments thereof come along in the shape of tangible objects (like e.g. a »vehicle tyre«) in the real world as indicated by the generic clause. This double-tier construction of patent law makes it inherently difficult or even impossible to precisely control the effects of the patent law on real-world situations by manipulating the material criteria of patentability on the level of the inventions in the realm of the intangibles. This exactly seems to be the trap in which the parliamentary discussion is caught at the moment. Mr. Rocard had expressed his unease in view of his impression that there seemed to be no viable alternative to draft restrictive clauses again and again. I do not share such general pessimism. There are viable alternatives but they might not be available there where politics has searched for them now. I think two layers of the practical problem as posed by the directive should be clearly separated:
In fact, the patent system has two borderlines and, if you like, two fences:
Let us have a brief look at the system of continental Copyright Law. Nobody would seriously discuss questions like "Should an opera as such be copyrigtable?" or "Should architect's blueprints as such be subject to Copyright?". All such sorts of artistic work are extensively covered by Copyright law. This fact does not mean that putting all kind of artistic works under the regime of Copyright Law does not cause problems, e.g. for broadcasters, researchers, or collectors of art. But the political solution which was reached up to now is a dedicated and fine-tuned system of exemptions, not of complicated or restrictive material rules of copyrightable subject-matter. Where is the link to the problems in the field of patents? Section 11 of the German Patens Act says: »The effects of a patent shall not extend to [...] the use on board vessels of another State party to the Paris Convention for the Protection of Industrial Property of the patented invention, in the body of the vessel, in the machinery, tackle, gear and other accessories, where such vessels temporarily or accidentally enter the waters to which the territory of this Law extends on condition that such use serves exclusively the needs of the vessel [...].«How lucky our forefathers have been! In view of the increase of globalised trade at the end of the 19th century they did not enter into a discussion as to whether or not »tackles as such« should be patentable. They simply searched for a pragmatic solution by adjusting the effects of a patent, not by sophisticated debates on the borderline of patentable subject-matter. I am also convinced that the problem of ensuring interoperability to some necessary and reasonable extent which seems to be important indeed cannot be solved on the basis of the concepts of the first layer. Interoperability mostly depends on the structure of the rules governing effects of patents, not of the rules defining patentable subject-matter. However, ensuring interoperability should not be misunderstood as a tool to deteriorate the patent system; it makes no sense to cancel any effects of the patent system by overbroad exemptions.
»Although computer-implemented inventions are considered to belong to a field of technology, in order to involve an inventive step, in common with inventions in general, they should make a technical contribution to the state of the art." This was an offence as you know. "Although...they should" is a rhetorical figure, no legalese, which sounds like fraud and sure it was. Knowing that CII = software patents and TRIPs 27 it is obvious that we have a trap presented here. It was dropped in early stages of the debate. Post a Comment
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