[Patents] EPO confusion about business methods

[PILCH Hartmut phm@a2e.de]

Since there is significant resistance against patenting business methods,
the EPO is forced to struggle with inconsistent positions.

On the one hand, in order to allow software patents, it has already 
discarded its earlier insistence that "the invention must be in the 
technical field" (i.e. in the physical part of the computer, where natural
forces are appled) and instead decreed that "the question of inventivity
shall be considered separately from the question of technicity".

But by this warped logic, all previous limitations break and "anything
useful" has to be patentable, just as in the US.

But the EPO seems determined to have its cake and eat it.

For the field of business methods, it is looking for a way to return to
what German jurisprudence calls the "core theory" (Kerntheorie):  the
invention must be in the field of "software technology".

We should not allow them to get away with this.  Either they stick to the
core theory, and then software is not patentable.  Or they discard the
core theory, and then computer-based business methods will necessarily be
patentable, as they are in fact according to current bent law, see

        http://swpat.ffii.org/vreji/papri/bettenresch00en.html

and any claims that they aren't are mere attempts at disinformation, aimed
at temporarily splitting the resistance to patent inflation.

All patent lawyers I know of generally pretend to be dumb when it comes to
recognize one distinction:  that between 

        1. what is a patentable invention?  
           answer: "technical solution"
        2. what is the scope of infringing objects, against which a patent
           may be asserted?  
           answer: "material objects"   

A chemical procedure may be considered to be an algorithm.  As may a
computer program or a business method.  The chemical procedure can be
patented.  But against what can it be asserted?  Against a listing of
chemical formulas?  Against a book describing chemical procedures?  
Against a computer program that simulates chemical reactions? Against
human actions?  Certainly not.

The "core theory" allows to make the scope of 1 and 2 congruent:  an
algorithm is only patentable, if a material object (i.e.  more than a
computer program, a gene sequence or a scheme of human action, something
that is dependent on matter and not replicable) is needed to embody the
invention.

Thus, a chemical "algorithm" may be patented, if its realisation involves
a new way to apply natural forces and not merely a new way to perform
chemical calculations.

But our patent courts like to pretend that the list of exceptions in EPC
Art 52.2 is a list of things which aren't "technical inventions" (question
1), while it is really a list of immaterial things which fall outside the
scope of infringing objects.

Therefore they have created all kinds of pseudo-contradictions, such as
the contradiction that "technical algorithms" aren't patentable.

Although they spend their life creating unfathomably complex theories of
patent law, they are very good at confusing the most basic things when
confusion serves their group interest.

--------------------

http://www2.european-patent-office.org/search?NS-search-page=document&NS-rel-doc-name=/ojft/eng/4_2000/4_1950.htm&NS-query=%22diplomatic+conference%22&NS-search-type=NS-boolean-query&NS-collection=OJ%20English&NS-docs-found=8&NS-doc-number=6

Notice from the President of the European Patent Office dated 24 March
2000 concerning revision of the European Patent Convention.  

        In a decision dated 24 February 2000(1) the Administrative
Council of
the European Patent Organisation convened an EPC revision conference of
the contracting states. The conference is to be held in Munich from 20
to 29 November 2000. Invitations to attend the conference as observers
have also been extended to the states entitled to accede to the EPC, the
other states with observer status on the Administrative Council and
numerous intergovernmental and non-governmental organisations with an
interest in the European patent system. 

   [snip]

<----------------EPO ON PATENT OF BUSINESS METHODS------------>

http://www.european-patent-office.org/epo/pubs/oj000/7_00/7_3070.pdf

Administrative Council
Report on 80th meeting of the Administrative Council of the 
European Patent Organization (6 to 8 June 2000).

Amtsblatt EPA /Official Journal EPO /Journal officiel OEB 7/2000 

  page 310

Another area where there is contro-versy about patentability is
business and administrative methods. The EPC explicitly excludes
the patent- ability of methods of doing business as such.Even
so,there has been a large increase in the number of applications
in these areas because of the expansion of e-commerce on the
Internet and decisions handed down by the US Court of Appeals for
the Federal Circuit that business methods are not necessarily
exclu-ded from patentability in the United States.The number of
applications of this type waiting to be searched and examined has
more than dou- bled over the last two years and at present totals
around 400. 

In practice,the vast majority of these applications do not simply
claim abstract business methods, but rather describe technical
means (eg computer networks)for carrying out these methods.They
are not considered to relate to methods of doing business as
such,and are examined in exactly the same way as any other
application.They are thus patentable in Europe if they fulfil the
normal requirements for patentability,including novelty,
inventive step and industrial appli-cability.However,it has to
be stressed that,in a strict interpretation of patent law,an
invention must overcome an objective technical problem in a
non-obvious way.In other words,it is the technical inven-tion to
which a business machine may relate which makes it patent-
able, not simply its commercial ingenuity.              

        page 311

Predictably,this topic has generated a great demand for
information from representatives,applicants and the public
alike.The Office has taken every opportunity to make its posi-
tion clear and has frequently sup-plied speakers for seminars
and conferences.

-phm