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Monday, May 29, 2006

Some Questionable Assertions on EU Position Concerning CIIs.

Somewhat strange political assertions concerning an alleged amended position of the EU Commission with regard to the patentability of computer-implemented inventions (CII) recently have been circulated on the Internet.

On May 24th, 2006, FFII had published

a statement under the title "European Commission: EPO Case Law Not Binding - Software Not Patentable". Referring to the answer given by the EU Commission in reponse to a question from Polish MEP Adam Gierek they argued:

"[...] The Commission replied that the pre-grant phase of patents could still be governed by the European Patent Convention (and thus be handled by the EPO), but that post-grant aspects such as validity and litigation would fall under Community Patent regulation. The ECJ would also be able to form its own opinion, independent of EPO case law. Their conclusion is that in practice, the EPO would therefore have to follow Community Patent case law and not the other way round.

Pieter Hintjens, president of the FFII, said: 'I'm stunned. The Commission has been denying reality for so long and pretending that the earth was flat and apples did not fall downwards, whereas the EPO has been obnoxiously granting unwarranted pieces of paper whose only innovative effect has been in the domain of patent litigation. Does the Commission now accept that the EPC rules do actually rule? Or have I misunderstood something?'

He further added: 'The proposed Community patents will be granted by the EPO: a non-accountable, non-Community organisation, with no independent appeal possible. The Commission says this is no problem since the ECJ can invalidate the granted patents in infringement cases. That is however only true if it comes to civil litigation, which is often too expensive for SMEs, forcing them to pay for a license. Therefore software patents not yet taken to court will impose an enormous burden on the industry.'

'It is nevertheless good to see that the Commission no longer presents EPO case law as 'the status quo which must be codified'. However, it relies too heavily on courts to keep Europe safe from software patents. Whether or not Europe should have software patents is not a legalistic detail which should be left to courts to sort out. It is a crucial economic policy decision which must be taken by our elected representatives.' [...]"

I think that Mr. Hintjens in fact has misunderstood something. FFII correctly wrote that the pre-grant phase shall be governed by EPC, i.e. with regard to the crucial criteria of patentability by Artcle 52 EPC. On the basis of this Article, in EPO's view, no patents on software 'as such' are granted. Patents are granted on computer-implemented inventions provided that such inventions have necessary technicality. Also under the proposed EU Community Patent Regulation, the Boards of Appeal of the EPO will continue to have the utimative authority with regard to the pre-grant phase, i.e. in case of a dispute between the EPO and the applicant they are the competent institution taking a binding final decision on whether a patent is granted or not.

But things get interesting when the post-grant phase is analysed. Article 28 of the Proposal for a Council Regulation on the Community patent as published with

Document 7119/04 dated March 08, 2004, says:

"Grounds for invalidity

1. The Community patent may be declared invalid only on the grounds that:

(a) the subject-matter of the patent is not patentable according to Articles 52 to 57 of the Munich Convention;

(b) the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;

(c) the subject-matter of the patent extends beyond the content of the patent application as
filed, or, if the patent was granted on a divisional application or on a new application filed in accordance with Article 61 of the Munich Convention, beyond the content of the earlier application as filed;

(d) the protection conferred by the patent has been extended;

(e) the proprietor of the patent is not entitled under Article 4(1) and (2) of this Regulation;

(f) the subject-matter of the patent is not new having regard to the content of a national patent application or of a national patent made public in a Member State on the date of filing or later or, where priority has been claimed, the date of priority of the Community patent, but with a filing date or priority date before that date.

2. If the grounds for invalidity affect the patent only partially, invalidity shall be pronounced in the form of a corresponding limitation of the patent. The limitation may be effected in the
form of an amendment to the claims.

3. In the processes before the courts referred to in Article 30 concerning the validity of the Community patent, the holder of the patent shall be entitled to limit the patent by modifying the claims. The limited patent shall then be the basis for the process."

Article 30 of that Draft reads:

"Actions and claims relating to the Community patent - Exclusive jurisdiction of the Court of Justice

1. The Community patent may be the subject of invalidity or of infringement proceedings, of action for a declaration of non-infringement, of proceedings relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the patent, or of a counterclaim for a declaration of invalidity or of a petition for the grant or revocation of a compulsory licence. It may also be the subject of proceedings or claims for damages or provisional or protective measures or requests for the determination of compensation.

2. In accordance with the decision giving the Court of Justice jurisdiction for matters relating to the Community patent, adopted pursuant to Article 229a of the Treaty, the actions and claims referred to in paragraph 1 shall come under the exclusive jurisdiction of the Court of Justice, except in the case of Article 9a. In accordance with the decision taken pursuant to Article 225a of the Treaty, they shall be brought in the first instance before the Community Patent Court and, on appeal, before the Court of First Instance."

Now, this means that in fact an institutional conflict between the Boards of Appeal of the EPO, on the one hand, and the ECJ, on the other hand, theoretically might come up later on after the full implementation of the EU Community Patent: For example, in a borderline case concerning some CII, the Boards of Appeal in the pre-grant phase might give "green light" to grant a patent but later the ECJ might cancel the same patent upon an invalidation action brought before the Court by some third party in the post-grant phase because of a different view on Article 52 EPC. However, in principle this is already the current situation we now have with regard to the national courts which have to take decisions in cancellation cases concerning patents granted by the EPO under the EPC. In such cases, they are not allowed to base their decisions on their respective national law but they are strictly bound to interpret the EPC. The general practice is that national Courts are acting carefully in order to avoid creating case-law diverging with regard to the line followed by the Boards of Appeal of the EPO whenever possible. The only generalisation would be that after installation of the EU Community Patent, the ECJ also would have a (big) voice amongst the Courts decising cancellation cases for European Patents granted by the EPO. With regard to Courts within EU Member States it should be considered that in such scenario they won't feel free to depart from any ECJ line of case-law further on.

And, of course, in the EU Commission's view, the EPO surely does not grant "Software Patents". Hence, asserting that also under the EU Community Patent scheme the EPO will not grant such patents does not come as a surprise. Please note that the EU Commission did not issue any statement to the effect that the EPO shall be barred from further granting patents on (technical) CIIs.

In view of this situation, I wholehartedly agree with

Mr. Ted Blake of the UK's

Chartered Institute of Patent Agents (CIPA)

who recently wrote:

"[...] A series of articles appearing recently in specialist publications have caused consternation among software developers and IT companies when they claimed that there had been a change in the European Commission's stance on software patents. These stories either implied or asserted that computer programs will be excluded from patentability in the upcoming Community Patent legislation and that the European Patent Office will be bound by this law.

But software patent specialists - members of the UK's Chartered Institute of Patent Agents (CIPA) - are confident that there has in fact been no change and that the journalist has misinterpreted the situation. CIPA spokesman Ilya Kazi said 'In response to a question from Adam Gierek, a Polish MEP, the European Commission confirmed that Community Patents could be revoked if they had been granted improperly - for example, if a patent related to excluded subject-matter. This is entirely what we would expect. As part of the patenting process, some patents may be granted which subsequently can be shown to be invalid. For example, new information may be revealed that was not available to the granting authority.'

Ilya Kazi went on to explain that in the answer to the Polish MEP's question has been misconstrued as a statement that Community Patents relating to software will automatically be revoked. This is not the case and is not what was actually said. 'Accordingly', said Ilya, 'the position remains that patents relating to software will continue to be granted, and should be upheld, provided the underlying invention has the necessary technical character. There are no specific proposals to change the regime relating to software or to introduce a further appeal process.' [...]"

Sadly, there have appeared a number of in fact very misguiding articles on the Internet like

this,

this and

that. See also the

discussion on Slashdot.

BTW, nobody should take for granted that the EU Community Patent scheme will ever enter into force. Altogether, the entire public brouhaha around the Commission's reply to Mr. Gierek's question appears to be nothing more than a storm in a teacup.

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On the basis of this Article, in EPO's view, no patents on software 'as such' are granted. Patents are granted on computer-implemented inventions provided that such inventions have necessary technicality

You should be more explicit
Patents are granted on computer-implemented inventions provided that such inventions consist of a computer-readable medium having computer-executable instructions
as was written recently just here

This "technicality" nonsense has to be exposed. The king has no clothes, let us not pretend otherwise.

# posted by

AFrightenedComputerScientist : 31 May, 2006 13:15

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Patent Attorney Axel H Horns' Blog on Intellectual Property Law.

Monday, May 29, 2006

Some Questionable Assertions on EU Position Concerning CIIs.

VPP