[AktiviX-discuss] software idea patents law project amendments
ana
anap at riseup.net
Tue Jul 5 23:48:44 UTC 2005
Hi,
This is an extrract of a .doc file that no one working on patents should
use (!) about the amendments that will be allegedly presented to the law
text that came from the european commission, for approval by parliament
on 10th of july, i think it was?
A ver si para la votación de la semana que viene se logra algo :S
Apprarently there were tables and everything in the original .doc so you need a bit of patience to read this.
===============
EUROPEAN PARLIAMENT
2004
2009
Committee:
AMENDMENT by:
To DRAFT REPORT/OPINION by
Michel Rocard
PE
357.776
On the patentability of computer-implemented
inventions
Proposal for a
COM ():
0092
C6:
0058/2005
Date:
Wednesday, 29 June 2005
Signature:
Council common position
Amendment by Parliament
(Amendment 1)
Article 1
This Directive lays down rules for the patentability of computer-implemented
inventions.
This directive lays down the rules concerning the patentability of
computer-aided inventions.
Or. en
Justification
This replacement is to be performed at all places in the text where the
expression "computer-implemented invention" is used.
The expression "computer-implemented" is not suitable, because it implies
that an invention can be wholly realised by means of a computer, which would
mean that pure software is patentable. Since both the Commission and the
Council agreed that software should not be patentable, the terminology used
in the directive should not imply the contrary. The scope of the directive
is thus the one of the patenting of devices that use software in order to
aid the performance of the claimed invention.
The concept of a computer-implemented invention is not used by computer
experts either, and in fact is not in wide use at all. It was introduced in
May 2000 by the European Patent Office (EPO) to justify the patenting of
"computer-implemented business methods" and bring EPO practice into line
with Japanese and US practice. The term "computer-implemented invention"
implies that solutions involving only generic computers are patentable
inventions.
This idea is contrary to Article 52 of the European Patent Convention, which
states that algorithms, methods for doing business, and computer programs do
not constitute inventions within the meaning of patent law.The directive can
not be intended to declare computer programs to be patentable inventions by
presenting them in some other wording.
Amendment 2
Article 2(a)
(a) "computer-implemented invention" means any invention the performance of
which involves the use of a computer, computer network or other programmable
apparatus, the invention having one or more features which are realised
wholly or partly by means of a computer program or computer programs;
(a) computer-aided invention means an invention in the sense of patent law
the performance of which involves the use of programmable apparatus;
Or. en
Justification
In some jurisdictions, the understanding of the term "invention" has
gradually been slipping towards meaning "anything appearing in a patent
claim". By adding the requirement that it should be an invention in the
sense of patent law, this article stresses that this definition has to be
read in conjunction with the requirements laid down for inventions in
general patent law (such as the patent law of member states, the European
Patent Convention, or the future community patent directive).
Amendment 3
Article 2(b)
(b) "technical contribution" means a contribution to the state of the art in
a field of technology which is new and not obvious to a person skilled in
the art. The technical contribution shall be assessed by consideration of
the difference between the state of the art and the scope of the patent
claim considered as a whole, which must comprise technical features,
irrespective of whether or not these are accompanied by non-technical
features
(b) "technical contribution" means a contribution to the state of the art in
a field of technology. The contribution is the set of features by which the
scope of the patent claim as a whole is considered to differ from the state
of the art. The contribution must be technical, that is, comprise technical
features and belong to a field of technology. Without a technical
contribution, there is no patentable subject-matter and no invention. The
technical contribution must fulfil the conditions for patentability. In
particular, it must be novel and not obvious to a person skilled in the art.
Or. en
Justification
The concept of technical contribution has pervaded the discussion about the
directive and generated great confusion and therefore to some extent
deserves to be clarified. While intuitively and in the subjective belief of
most commentators the technical contribution appears to be related to the
question of patentable subject matter (Article 52 EPC), the EPO used the
term as a means of abolishing the subject-matter test by mixing it with the
non-obviousness test (Article 56 EPC) in obscure ways, which national courts
and ministerial patent officials have found difficult to follow. A similar
amendment was adopted in first reading by the EP. This amendment adds some
ideas of the Council such as that of subtracting the prior art from the
claimed object.
This amendment is very similar to what was approved in JURI. It corrects one
error in the second sentence however: the JURI version states that the
technical contribution is the set of features which is claimed to differ
from the state of the art. This implies that all features not part of the
state of the art are by definition technical, which is of course not
necessarily the case.
Amendment 4
Article 2(ba) (new)
(ba) a "field of technology" is a field of applied natural science;
Or. en
Justification
The Council's draft draws heavily on terms such as "technology",
"technical", "fields of technology", "technical contribution", "technical
effect" etc, without explaining whether "technology" here is "applied
natural science", i.e. the traditional meaning in patent law, or "applied
exact science", a wider meaning which includes mathematics, business methods
and in fact anything that can be programmed on a computer. The consequence
of this wider meaning, which is implied in some decisions of the EPO, is, in
the words of a leading EPO theoretician, that "all practical problem
solutions are technical inventions".
The German Federal Court of Justice insists on the narrower meaning, as
witnessed in the revocation of a computer-implemented "communication
solution" patent in 2004 with the reason that "the problem does not require
the use of controllable forces of nature". As their presiding judge recently
stressed at a hearing in Berlin, a choice by the legislator for this
narrower meaning is absolutely necessary, as otherwise there would no longer
be any secure legal basis for rejecting business method patents
Amendment 5
Article 2(bc) (new)
(bc). A "computer" is a realisation of an abstract machine, consisting of
entities such as processing units, storage space and interfaces for
information exchange with external systems and human users. "Data
processing" is calculation with abstract component entities of computers. A
"computer program" is a data processing solution which can, once it has been
correctly described, be executed by computers.
Or. en
Justification
Definition of the computer program is important for determining the
patentability. This amendment also restricts overly broad interpretations of
the term "data processing" by defining it as an abstract process. The
Council defined "computer program" in its Article 4.2 indirectly as "the
source code or object code of one individual computer program". This is
inappropriate, since patent law does not deal with computer programs at that
level.
Amendment 6
Article 3
In order to be patentable, a computer-implemented invention must be
susceptible of industrial application and new and must involve an inventive
step. In order to involve an inventive step, a computer-implemented
invention must make a technical contribution.
In order to be patentable, a computer-aided invention must make a technical
contribution. The technical contribution must be new and not obvious to the
person skilled in the art.
Or. en
Justification
The Council's proposal is inconsistent here. In its article 2b, the Council
says that a technical contribution must be new and non-obvious (= involve an
inventive step). In this article the Council says that for an invention to
be non-obvious, there must first be a technical contribution. This amendment
resolves the contradiction by bringing this article in line with Article 2b,
which represents the common sense of patent law in Europe as used by most
national courts today. It was also used by the EPO before 2000, when the
"Controlling Pension Benefits System" decision brought the confusion,
apparently in a hectic attempt to create new rules for the planned
directive.
This amendment is a simplified version of the amendment adopted in JURI. It
also fixes that amendment's second sentence which indicates that the
contribution can consist entirely out of non-technical features.
Amendment 7
Article 4 paragraph 1
1. A computer program as such cannot constitute a patentable invention.
1. While products and processes in all fields of technology are patentable
inventions regardless of whether or not they involve computer programs, the
subject matter and activities within the computer programs are not
patentable on their own.
Or. en
Justification
Article 52(2) EPC states that programs for computers, along with aesthetic
creations, mathematical methods, business methods et al, are not inventions
in the sense of patent law. Art 52(3) limits the exclusions to subject
matter and activities as such. There has been much dispute about how article
52(3) should be applied to 52(2). While it is a good idea to transfer Art 52
EPC into EU law, care should be taken to transfer not only the words, but
also to resolve the ambiguities and thereby achieve harmonisation and
clarification.
Amendment 8
Article 4 paragraph 2
2. A computer-implemented invention shall not be regarded as making a
technical contribution merely because it involves the use of a computer,
network or other programmable apparatus. Accordingly, inventions involving
computer programs, whether expressed as source code, as object code or in
any other form, which implement business, mathematical or other methods and
do not produce any technical effects beyond the normal physical interactions
between a program and the computer, network or other programmable apparatus
in which it is run shall not be patentable.
2. A computer-aided invention shall not be regarded as making a technical
contribution merely because it uses better algorithms so as to reduce the
need for processing time, storage space or other resources within the data
processing system. Accordingly, innovations involving computer programs
which do not solve any problems of applied natural science beyond the
improvement of data processing efficiency shall not be patentable.
Or. en
Justification
The Council's version is tautological and implies that business methods are
patentable inventions when they "produce a further technical effect", i.e.
when they fulfill a condition which the European Patent Office, which
invented this rhetoric in 1998, has admitted to be meaningless.
Since computers are well known, the presence of a computer can of course not
by itself constitute a technical contribution. The question is whether the
presence of a computer in combination with an improved algorithm can
constitute a technical contribution. By failing to pose this question, the
Council seems to imply a positive answer.
The distinction between "business method" and "invention which implements a
business method" is a common technique for circumventing Art 52 EPC.
The question of how the "invention" is expressed has never been relevant,
nor has the distinction between more or less human-readable descriptions of
programs. This subsentence serves no regulatory purpose, apart from
insinuating that Art 52(2)c EPC should be interpreted in a way that makes it
meaningless.
The sentence
"inventions involving ... business methods ..., which implement ..., shall
not be patentable."
is syntactically ambiguous but probably means that "business method
inventions" are patentable, if they "produce a further technical effect".
The term "normal physical interactions between a program and a computer"
means about as much as "normal physical interactions between a recipe and a
cook".
In 2000, EPO itself has criticised this wording and explained that it was
merely a wordplay temporarily used in the IBM decision of 1998 in order to
circumvent the European Patent Convention, in anticipation of a change of
law that would render it unnecessary:
http://www.european-patent-office.org/tws/appendix6.pdf:
There is no need to consider the concept of "further technical effect" in
examination, and it is preferred not to do so for the following reasons:
firstly, it is confusing to both examiners and applicants; secondly, the
only apparent reason for distinguishing "technical effect" from "further
technical effect" in the decision was because of the presence of "programs
for computers" in the list of exclusions under Article 52(2) EPC.
If, as is to be anticipated, this element is dropped from the list by the
Diplomatic Conference, there will no longer be any basis for such a
distinction. It is to be inferred that the Board of Appeals would have
preferred to be able to say that no computer-implemented invention is
excluded from patentability by the provisions of Articles 52(2) and (3) EPC.
This amendment fixes the errors while trying to stay as close to the
original wording as possible.
Amendment 9
Article 5 paragraph 2
2. A claim to a computer program, either on its own or on a carrier, shall
not be allowed unless that program would, when loaded and executed in a
programmable computer, programmable computer network or other programmable
apparatus, put into force a product or process claimed in the same patent
application in accordance with paragraph 1.
2. A patent claim to a computer program, either on its own or on a carrier,
shall not be allowed.
Or. en
Justification
It is contradictory to say that computer programs can not be inventions and
yet can be objects of patent claims. This is why the Commission also did not
allow program claims in its original proposal.
The condition after "unless" in the Council version is always true, provided
that the patent application was properly drafted. The Council amendment
appears to pretend that, while it is allowing program claims, it really only
means to allow process claims, and that the program claims are really
included -- in defiance of the logic of the patent system -- as a kind of
additional enforcement tool in cases where the inventor did not invent
software as such but some kind of technical process beyond software.
This however would mean that the inventor could obtain a monopoly on
something which he did not invent and which, in most cases, will be neither
new nor non-obvious nor even original. Such a monopoly would moreover be
economically undesirable. There is no good rationale for allowing anyone,
not even automobile makers, to control the market of software publishing
with property claims based on anything other than copyright.
It must suffice that the /user/ of a computer-aided automobile engineering
invention needs to obtain a patent license, regardless of which software he
uses. In practise, this usually does suffice. The only case where program
claims would really perform an economic function is in the software
industry, where the computer program as such would constitute the
"invention"
The effect of allowing program claims is to make the publication of a
program which can express the underlying invention a direct patent
infringement -- regardless of how in fact the program would be used.
This would mean
* the program would be unusable for legitimate discussion and
non-commercial experimentation, normally encouraged in patent law.
* the program would be unusable for legitimate purposes other than those
specified in the patent application -- for example, a patented program
method for predicting automotive engine dynamics could not be used to
predict stock-market behaviour (and separate amendments saying that this is
not infringement will not help, because such claims cover the distribution
of said program and not only the use).
* EU companies would be forbidden to use the program method to compete
against foreign companies overseas in territories where the patent was not
in force.
Amendment 10
Article 5.2 (b) (new)
2b. The creation, publication or distribution of information can never
constitute a patent infringement.
Or. en
Justification
This amendment does not make any patents invalid, rather it limits the ways
in which a patent owner can enforce his patents.
Freedom of publication, as stipulated in Art 11 of the European Convention
on Human Rights (ECHR), can be limited by copyright but not by patents.
Copyright provides a narrow exclusion scope which already takes the freedom
interests of publishers into account.
Patents allow for much broader, more sweeping exclusions and involve slow
and costly legal procedures. The use of patents as a limit on the freedom
of publication was traditionally never intended and can not be justified
today in view of the increased interest of today's information society in
freedom of publication.
Amendment 11
Article 6 (a) (new)
Wherever the use of a patented technique is necessary in order to ensure
interoperability between two different data processing systems, in the sense
that no equally efficient and equally effective alternative non-patented
means of achieving such interoperability between them is available, such use
is not considered to be a patent infringement, nor is the development,
testing, making, offering for sale or licence, or importation of programs
making such use of a patented technique to be considered a patent
infringement.
Or. en
Justification
Interoperability of data processing systems (e.g. computers) lies at the
foundation of the information economy and allows for fair competition by all
players large and small.
Article 6 of the Council only refers to the exemption provided for by the
Copyright directive. This means that a software developer is allowed to find
out how to make his data processing system interoperable with that of a
competitor, but afterwards he cannot necessarily use his gained knowledge,
since that could be covered by patents.
This amendment makes sure that patents also cannot be used to prevent
interoperability. It was passed in an almost identical form by ITRE and JURI
prior to the first reading ("data processing systems" read "computer systems
or networks"). In first reading, a more sweeping version of this amendment
was passed (with 393 vs 35 votes), which appeared as Article 9 in the
consolidated version.
The expression "for the sole purpose" reverts to the spirit of the original
ITRE/JURI version of the interoperability exemption (which is more limited),
which was also supported by Luxembourg and several others in the Council
(but didn't make it).
Amendment 12
Recital 6
The Community and its Member States are bound by the Agreement on
trade-related aspects of intellectual property rights (TRIPS), approved by
Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on
behalf of the European Community, as regards matters within its competence,
of the agreements reached in the Uruguay Round multilateral negotiations
(1986-1994) 1. Article 27(1) of TRIPS provides that patents shall be
available for any inventions, whether products or processes, in all fields
of technology, provided that they are new, involve an inventive step and are
capable of industrial application. Moreover, according to that Article,
patent rights should be available and patent rights enjoyable without
discrimination as to the field of technology. These principles should
accordingly apply to computer-implemented inventions.
The Community and its Member States are bound by the Agreement on
trade-related aspects of intellectual property rights (TRIPS), approved by
Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on
behalf of the European Community, as regards matters within its competence,
of the agreements reached in the Uruguay Round multilateral negotiations
(1986-1994) 1. Article 27(1) of TRIPS provides that patents shall be
available for any inventions, whether products or processes, in all fields
of technology, provided that they are new, involve an inventive step and are
capable of industrial application. Moreover, according to that Article,
patent rights should be available and patent rights enjoyable without
discrimination as to the field of technology. This means that patentability
must be effectively limited in terms of general concepts such as
"invention", "technology" and "industry", so as to avoid both unsystematic
exceptions and uncontrollable extensions, both of which would act as
barriers to free trade. Thus inventions in all fields of applied natural
science are patentable, whereas innovations in fields such as mathematics,
data processing and organisational logic, are not patentable, regardless of
whether a computer is used for their implementation or not.
Or. en
Justification
It must be made clear that there are limits as to what can be subsumed under
"fields of technology" according to Art 27 TRIPS and that this article is
not designed to mandate unlimited patentability but rather to avoid
frictions in free trade, which can be caused by undue exceptions as well as
by undue extensions to patentability. This interpretation of TRIPS is
indirectly confirmed by lobbying of the US government last year against Art
27 TRIPS, on the account that it excludes business method patents, which the
US government wants to mandate by the new Substantive Patent Law Treaty
draft.
In its first reading, Parliament deleted this recital, and therefore the
amendment that proposed the above change was not voted upon. Deletion is
better than keeping the original, but clarification regarding the
applicability and interpretation of the TRIPs agreement is better.
Amendment 13
Recital 7
(7) Under the Convention on the Grant of European Patents signed in Munich
on 5 October 1973 (European Patent Convention) and the patent laws of the
Member States, programs for computers together with discoveries, scientific
theories, mathematical methods, aesthetic creations, schemes, rules and
methods for performing mental acts, playing games or doing business, and
presentations of information are expressly not regarded as inventions and
are therefore excluded from patentability. This exception, however, applies
and is justified only to the extent that a patent application or patent
relates to the above subject-matter or activities as such, because the said
subject-matter and activities as such do not belong to a field of
technology.
(7) Under the Convention on the Grant of European Patents signed in Munich
on 5 October 1973 and the patent laws of the Member States, programs for
computers together with discoveries, scientific theories, mathematical
methods, aesthetic creations, schemes, rules and methods for performing
mental acts, playing games or doing business, and presentations of
information are expressly not regarded as inventions and are therefore
excluded from patentability. This exception applies because the said
subject-matter and activities do not belong to a field of technology.
Or. en
Justification
Art 52 EPC says that programs for computers etc are not inventions in the
sense of patent law, i.e. that a system consisting of generic computing
hardware and some combination of calculation rules operating on it can not
form the object of a patent. It does not say that such systems can be
patented by declaring them to be "not as such" or "technical". This
amendment reconfirms Art 52 EPC. Note that the exclusion of programs for
computers is not an exception, it is part of the rule for defining what an
"invention" is.
This amendment corresponds to recital 7 in the consolidated text of the EP's
first reading.
Amendment 14
Recital 9
Patent protection allows innovators to benefit from their creativity.
Whereas patent rights protect innovation in the interests of society as a
whole; they should not be used in a manner which is anti-competitive.
Patents are temporary exclusion rights granted by the state to inventors in
order to stimulate technical progress. In order to ensure that the system
works as intended, the conditions for granting patents and the modalities
for enforcing them must be carefully designed. In particular, inevitable
corollaries of the patent system such as restriction of creative freedom,
users´ rights or legal insecurity and anti-competitive effects must be kept
within reasonable limits.
Or. en
Justification
Innovators can benefit from their creativity without patents. Whether patent
rights "protect" or stifle innovation and whether they act in the interests
of society as a whole is a question that can only be answered by empirical
study, not by statements in legislation.
Amendment 15
Recital 10
In accordance with Council Directive 91/250/EEC of 14 May 1991 on the legal
protection of computer programs, the expression in any form of an original
computer program is protected by copyright as a literary work. However,
ideas and principles which underlie any element of a computer program are
not protected by copyright.
In accordance with Council Directive 91/250/EEC of 14 May 1991 on the legal
protection of computer programs, property in computer programs is acquired
by copyright. General ideas and principles which underlie a computer program
must stay freely usable, so that many different creators may simultaneously
obtain property in individual creations based thereon.
Or. en
Justification
Copyright does not only apply to literary works, but also to textbooks,
operation manuals, computer programs and all kinds of information
structures. Copyright is the system of "intellectual property" for computer
programs, not only a system for a "literary" side aspect of computer
programs.
Amendment 16
Recital 12
It is a condition for inventions in general that, in order to involve an
inventive step, they should make a technical contribution to the state of
the art.
It is a condition for inventions in general that they must make a technical
contribution to the state of the art. The technical contribution must be new
and not obvious to the person skilled in the art. If there is no technical
contribution, there is no patentable subject matter and no invention.
Or. en
Justification
This amendments was newly inserted by the Council. It attempts to further
codify the EPO's "technical contribution in the inventive step" doctrine.
What one invents is his contribution to the state of the art, and for this
contribution to be patentable it has to (among other things) involve an
inventive step. Not the other way round.
Amendment 17
Recital 13
(13) Accordingly, although a computer-implemented invention belongs to a
field of technology, where it does not make a technical contribution to the
state of the art, as would be the case, for example, where its specific
contribution lacks a technical character, it will lack an inventive step and
thus will not be patentable.
(13) Accordingly, an innovation that does not make a technical contribution
to the state of the art is not an invention within the meaning of patent
law.
Or. en
Justification
The Council text declares computer programs to be technical inventions. It
removes the independent requirement of invention ("technical contribution")
and merges it into the requirement of non-obviousness ("inventive step").
This leads to theoretical inconsistency and undesirable practical
consequences, as explained in detail in the justification of the amendment
to article 4.
Amendment 18
Recital 16
(16) Furthermore, an algorithm is inherently non-technical and therefore
cannot constitute a technical invention. 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.
(16) Furthermore, an algorithm is inherently non-technical and therefore
cannot constitute a technical invention.
Or. en
Justification
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).
Amendment 19
Recital 19
(19) This Directive should be limited to laying down certain principles as
they apply to the patentability of such inventions, such principles being
intended in particular to ensure that inventions which belong to a field of
technology and make a technical contribution are susceptible of protection,
and conversely to ensure that those inventions which do not make a technical
contribution are not susceptible of protection.
(deleted)
Or. en
Justification
Similarly to Council recital 13, this amendment claims that there are
non-technical inventions. See the justification under the amendment to
recital 13 for more information.
Amendment 20
Article 4 paragraph 3 (new)
3. Computer-aided inventions are not considered to make a technical
contribution merely because they make better use of data processing
resources such as processing time or storage space.
Or. en
Justification
This amendment reflects current case law in Germany, and a similar decision
in the UK case 'Gale's Application'.
In the words of the justices of the German Federal Patent Court (BPatG,
decision of 26. March 2002, 17 W (pat) 69/98):
"The applicant sees as a decisive indication of technicity of the method
that it is based on a technical problem. Because the proposed method does
not need a dictionary, the memory space for this can be saved. [...] As far
as the technical problem is concerned, this can only be considered as an
indication but not as a proof of technicity of the process. If computer
implementations of non-technical processes were attributed a technical
character merely because they display different specific characteristics,
such as needing less computing time or less storage space, the consequence
of this would be that any computer implementation would have to be deemed to
be of technical character.
This is because any distinct process will have distinct implementation
characteristics, that allow it to either save computing time or save storage
space. These properties are, at least in the present case, not based on a
technical achievement but result from the chosen non-technical method. If
the fact that such a problem is solved could be a sufficient reason for
attributing a technical character to a computer implementation, then every
implementation of a non-technical method would have to be patentable; this
however would run against the conclusion of the Federal Court of Justice
that the legal exclusion of computer programs from patentability does not
allow us to adopt an approach which would make any teaching that is framed
in computer-oriented instructions patentable".
Amendment 21
Recital 11
In order for any invention to be considered as patentable it should have a
technical character, and thus belong to a field of technology.
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.
Or. en
Justification
The Council text is not in line with Art 52 EPC. Art 52(2) EPC lists
examples of non-inventions. It is not permissible to subsume these under
"inventions" and then test their technical character. Moreover, while it can
not be inferred from Art 52 EPC that all technical innovations are
inventions, it can, based on a unanimous tradition of patent law, be assumed
that all inventions have technical character.
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