From phm@a2e.de Sat, 10 Jun 2000 23:47:02 +0200 (CEST)
Date: Sat, 10 Jun 2000 23:47:02 +0200 (CEST)
From: PILCH Hartmut phm@a2e.de
Subject: [Patents] Schiuma's evidence on the TRIPS trick

I am currently reading an article by Daniele Schiumain the legal journal
IIC Vol 31, which vehemently argues that the 'computer program' exception
in EPC 52(2) is non-conformant to TRIPS 27 and must be deleted.

To facilitate the discussion of this article, I first quote TRIPS 27:

<<
                                      Article 27
                                           
                              Patentable Subject Matter
                                           
   1.    Subject to the provisions of paragraphs 2 and 3, 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.See footnote 5 Subject to paragraph 4 of
   Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents
   shall be available and patent rights enjoyable without discrimination as to the
   place of invention, the field of technology and whether products are imported or
   locally produced.
   
   2.    Members may exclude from patentability inventions, the prevention within
   their territory of the commercial exploitation of which is necessary to protect
   ordre public or morality, including to protect human, animal or plant life or
   health or to avoid serious prejudice to the environment, provided that such
   exclusion is not made merely because the exploitation is prohibited by their
   law.
   
   3.    Members may also exclude from patentability:
   
       (a)    diagnostic, therapeutic and surgical methods for the treatment of
   humans or animals;
   
       (b)    plants and animals other than micro-organisms, and essentially
   biological processes for the production of plants or animals other than
   non-biological and microbiological processes. However, Members shall provide for
   the protection of plant varieties either by patents or by an effective
   sui generis system or by any combination thereof. The provisions of this
   subparagraph shall be reviewed four years after the date of entry into force of
   the WTO Agreement.
>>

The argumentation is built on the presumption that regional legal
definitions of "field of technology", "invention" etc should be avoided
and a uniform global legal definition should be constructed, because the
object of the TRIPS treaty is "reducing distortions and impediments to
international trade" and the non-uniformity of patent law regarding
software is such a distortion.

This is one of many unreflected presumptions that make the argumentation
circular.  TRIPS is intended to "harmonise", as it was always called, not
to "uniformise" the systems of various countries.  It imposes more
abstract rules such as that no country shall arbitrarily exclude any field
of technolgy it happens to want to protect.

Here is another example of the circularity of Schiuma's reasoning:

<<
Even in light of the exceptions in Art.27(3) of TRIPS, it does not appear
permissible to construe the term "inventions" in Art. 27(1) differently on
a country-by-country basis by using the different legal definitions in the
individual member states.  Article 27(3) specifies definitely those areas
of invention that a member can exclude from patentability.  The attempt to
expand artificially the areas of exclusion permitted by Art. 27(3) by
using a "national" legal definition of the concept of the "invention" to
exclude from patentability subject matter that is actually to be patented
pursuant to Art. 27(1), would thus represent an attempt to evade
Art. 27(3) and would lead to a conflict between the provisions of
Art. 27(1) and (3). 
>>

Here Schiuma presupposes what he wants to prove.  Also he seems to build 
on a a wordplay: "those areas of invention that a member can
exclude" isn't the same as "legal definition of the term invention".
If that legal definition is different in a country, then the scope of
"subject matter that is actually to be patented pursuant to Art. 27(1)" 
is also different in that country, and that without recourse to any list
of "areas that a member can exclude".  

Schiuma proceeds to argue that patenting software is more in accordance
with TRIPS than not patenting and therefore the whole world must uniformly
patent software.  This argumentation, as most legal argumenation contains
a lot of personal politico-philosophical assumptions mixed with a
complicated set of laws and caselaw.  This is a dishonest trick used by
lawyers to usurp legislative power from the People.  Here is an example
of Schiuma's philosophy on software: 

<<
.. no [ TRIPS negtioation group ]  member equated or intended to equate
software with mathematical methods or the like.  This would also be in
conflict with the nature of software, according to which specific
(program) commands cause a physical change in specific elements of the
computer.  Accordingly, computer programs, i.e. software, are always of
technical nature.  In contrast, mathematical methods and scientific
theories (as such) represent pure knowledge that causes no physical
changes in its abstract form.  Only the application of a mathematical
method, for instance, in a particular field of technology (e.g. by means
of a computer) causes a physical change and would thus be technical.
>>

This is completely inevident.  Software programs as such (i.e. when not
running) also don't cause a physical change in any element of the
computer.  And even when running, this change does not go beyond the
normal predisposition of the computer.  

A program has one thing in common with a machine:  it behaves.  But it has
another thing in common with a mathematical formula: it is equivalent to
it, and it is pure information which can be copied.  Why should it be up
to lawyers to decide which of these is more essential.  How can one decide
in just a few sentences like above?

There seems also to be a big non sequitur in the following paragraph:

<<
Just as pharmaceutical and agrochemical products can be included within
Art 27 of TRIPS without any difficulty, and thus can be ascribed to a
"field of technology", software inventions can also be qualified as
belonging to a "field of technology".  Correspondingly, software cannot be
excluded a priori from the "field of technology" and thus from Art 27(1).
>>

If software "*can* be qualified as .. f o t", that doesn't imply that it
"cannot be excluded ...".  Does Mr. Schiuma really ignore the difference
between *can* and *must* ??

The question of economic effect and wishability of software patenting does
not appear in Schiuma's writing, but there is the assertion that software
has become a huge industry with an annual economic growth of 13% which
deserves equal "protection" with other "fields of technology".

During the process of this argumentation he finds some contradictions
between TRIPS and software patenting and even contradictions between the
EPC and the EPO's legal practice.  He resolves all these by reference to
his initially stated basic presumptions that the world's IP system must be
uniformised.  Again we have a mixture of caselaw with implicit more or
less naive presumptions.

[ These are imho in sharp contradiction to the democratic
nature of our polity, because they give the peolpe no freedom to decide
anything.  All decisions have to be made in a world context, in which no
polity and no democracy exists.  This is why during the  TRIPS talks there
was only talk about "harmonisation" -- maybe in bashful conscience of the
undemocratic decisionmaking that was under way.  Now that TRIPS is valid,
the real intention of "uniformisation" seems to come out, which is why
there was a revolt in Seattle. ]

Schima's article can be quoted to support some of our criticism of the
EPO.

HYPOTHESIS 1: The German legislature, when ratifying TRIPS, assumed that
software in European law is "not field of technology" and that this
European view is conformant with TRIPS.  Thus, our patent lawyers are
clearly trying to impose their view on that of their sovereign:
EVIDENCE FROM SCHIUMA:

<<
In its ratification of GATT/TRIPS, the German legislature saw no conflict
between Sec. 1(2)(3) and 1(3) of the Patent Act and Art. 27(1) of TRIPS...

...

Leaving aside this inaccuracy, the teneral criticism can, however, be
raised that the German delegation's reply takes as its starting point the
German/European interpretation of the concept of "in all fields of
technology" in Art. 27(1) of TRIPS, which, as shown above, is
inadmissible.

Within the meaning of Art. 27(1), software must be regarded both as an
"invention" and as part of a "field of technology", with the result that
the exclusion of software "as such" from patentability purssuant to
Art. 52(2) and (3) of the EPC .. does not conform with TRIPS. 

>>

HYPOTHESIS 2:  The EPO's interpretation of "computer programs as such" as
"computer programs as far as they are non-technical" is wrong.
EVIDENCE FROM SCHIUMA:

<<
Even if a distinction is made between technical and non-technical software
programs, the provisions of Art. 52(2)(c) and (3) of the EPC ... are
incompatible with Art 27(1) of TRIPS, since the former exclude "programs
for computers as such" entirely, i.e. irrespective of such a distinction
between technical and non-technical programs.

>>

HYPOTHESIS 3: The deletion of the computer programs exceptions in 52(2)
will result in more software patenting even under the current regime of
bent law:
EVIDENCE FROM SCHIUMA:

<<
The non-conformity of the provisions of the .. EPC with TRIPS in regard to
software remains evident, for instance, from the decision
"Computer-Related Invention/VICOM, in which one and the same technical
constellation of facts was interpreted differently on the basis of
different wording in the patent claims: on the one hand, a "process for
the digital filtering of data" was regarded as a mathematical method or as
a computer program "as such" and thus was not patentable, while at the
same time a "procedure for the digital processing of images in the form of
a data array" was regarded as patentable.

It appears doubtful whether such a value judgement would have been made in
the same way if the prohibition on patents for computer programs "as
such" contained in Art. 52(2)(c) and (3) of the EPC had not existed, since
an improved "procedure for the digital filtering of data" (without
restriction to the processing of images) can indeed be a technical
contribution .. and thus be accessible to patent protection as a matter of
principle.

>>

HYPOTHESIS: TRIPS does not take priority over European patent law:
EVIDENCE:

<<
The decision to classify GATT/TRIPS as community law or as international
law continues to play a decisive role for its status in its relationship
to German (domestic) law: if it is regarded as community law, it then
takes priority, while it enjoys equal status if it need "only" be regarded
as international law.

There continues to be disagreement concerning the direct applicability of
the TRIPS provisions in the individual member states.  On this pont, the
German legislature has assumed that TRIPS is directly applicable as a
matter of principle (Memorandum, BT-Drucks, 12/7655 (new), at 335, 337).
In the present case .. direct applicability can, however, be excluded
since Art. 27(1) of TRIPS is insufiiciently clear and unconditional on the
question of the patentability of software.
>>

HYPOTHESIS: TRIPS does not mandate a change of the EPC
EVIDENCE:

<<
The European Patent Organisationis not a member of the WTO Agreement and
thus not subject to any direct obligations deriving from GATT/TRIPS.  It
is true that all EPC member states, with the exception of Monaco, are
members of the WTO, but TRIPS merely imposes the obligation to adapt
national regulations and not any international agreements.
>>

HYPOTHESIS: A lobby withing the EPO is putting European legislatures under
pressure to "conform to TRIPS"
EVIDENCE:

<<
At present, there is no specific discussion of any change to the German
Patent Act with respect to Art. 27(1) of TRIPS.  On the other hand, the
Standing Advisory Committee before the European Patent Office (At the
insistence of Austria, Spain, Sweden, Switzerland and the "users of the
system") has pointed out (at the 28th meeting in Munich on June 25-26
1998, cf the comment "Points for a revision of the EPC", CACEPO 2/98)
that the provisions of Art. 52(2) of the EPC with respect to computer
programs do not conform with Art. 27(1) of TRIPS, and should therevore be
deleted.  
>>

HYPOTHESIS: The EU harmonisation directive is an instrument needed to
force the nation states to submit to WTO verdicts.
EVIDENCE:

<<
According to Art. 64 of TRIPS, the Understanding on the Settlement fo
Disputes (Vereinbarung ueber Regeln und Verfahren zur BEilegung von
Streitigkeiten) is applicable to TRIPS, with the result that a GATT Member
can initiate dispute settlement proceedings before the WTO in order to
reconcile the provisions of the GErman Patent Act concerning the
patentability of software "as such" with Art. 27(1) of TRIPS.  However, at
present it is not possible for a natural or legal person to initiate such
proceedings before the WTO.  They can only institute domestic legal
proceedings and persuade their government to initiate dispute settlement
proceedings.

It would also be conceivable for an EU Member to invoke the European Court
of Justice pursuant to Art 107 of the EC Treaty for an infringement of the
obligation to implement EC law or secondary law by another
Member.  Proceedings on the infringement of the treaty can also be
initiated by the European Commission according to Art 169 of the EC
Treaty.  However, both possibilities presuppose the competence of the
European Community, which, according to Opinion 1/94 of the European Court
of Justice (ECJ, Opinion 1/94, November 15, 1994, 27 IIC 503 (1996) -
TRIPS Jurisdiction), is divided  with respect to GATT/TRIPS between the
European Community and its member states, with the European Community
enjoying jurisdiction in those areas in which it has applied harmonisation
measures.  In case of patent law, competence is held by the member states,
since here, with the exception of a number of narrowly defined areas, no
harmonisation has (as yet) taken place.  If the European Communities
should subsequently apply harmonisation measures (fn: The European
Commission plans a Directive for harmonising the patentability of computer
software inventions), the corresponding sector would fall within its
competence.

The decision to classify GATT?TRIPS as community law or as international
law continues to play a decisive role for its status in its relationship
to German law: if it is regarded as community law, it then takes priority,
while it enjoys equal stats if it need "only" be regarded as international
law. 
>>

Moreover interesting:

<<
Alternatively the Preseident of the EPO has proposed to revise
Art. 52(1)-(3) to read like Art. 27(1) of TRIPS, so that the exclusion
list, according to Art. 52(2) and (3) of the EPC, would be completely
deleted.  On the other hand, the EPO will revise the examination
guidelines for software-related inventions by including the interpretation
of Art. 52(2) and 52(3) of the EPC according to decsisions T 935/97 and T
1173/97.
>>

The latter revision was indirectly announce within the decisions
themselves:  there is a final remark saying that these decisions have a
norm-setting effect on the future practise.

Misleading Summary:

<< 

There is a binding obligation in Art. 27(1) of TRIPS to provide patent
protection for "inventions .. in all fields of technology", whereby these
terms must be construed autonomously on the basis of TRIPS, i.e.
independently of national interpretation approaches.

>>

As we have read above, TRIPS 27 contains no "obligation to construe these
terms autonomously on the basis of TRIPS".  And the German legislature
doesn't see such an obligation in there either.

I see here an attempt invalidate all national legislation and to instead
impose a treaty that was negotiated only by a few lawyers under the guise
of "harmonisation of laws" as a world law, accessible and changeable only
by an international oligarchy of lawyers.

Although TRIPS is only a pretext for them, in the long run we will have to
fight both TRIPS and the European Community Patent and instead restore the
sovereignty to that unit of social organisation that is capable of taking
grassroots decisions. At the moment that is most likely the nation state.

-phm






