From jean-paul.smets@mines.org  Mon Oct  9 10:10:30 2000
Date: Mon, 09 Oct 2000 12:10:30 +0200
From: Jean-Paul Smets jean-paul.smets@mines.org
Subject: [Patents] Some remarks on Vol 1 #284

Pierre BREESE a crit :
> 
> Fred Mobach wrote :
> >>
> > Software patents are forbidden in Europe by law. So you are encouraging your clients to use forbidden practices.
>
> ??? Filing a patent is never a ?forbidden practice?. If the invention is
> not compatible with art 52, the patent will be considered as invalid.
> But only claims relating to software "as such" may be rejected under
> Art. 52. And patent attorney are clever enough for not claiming
> ?software as such?.

In theory, filing a software patent could eventually be considered as a
forbidden practice (some kind of abuse of Law) if the person who does
that is doing it repeatedly while knowing that software can not be
patented. This is not the case currently of course because no one can
tell for sure nowadays to what extent sofware patents can be enforced in
Europe.

Also, the sentence "software as such can not be patented" is an
invention of the EPO and patent attorneys which was used to lead to an
interpretention of the Munich Convention which contradicts the
principles of the Munich Convention. The Munich Convention clearly
states that (1) software can not be patented (2) inventions containing
software can be patented. Then, EPO and patent attorneys have invented
this notion of "software as such" in order to explain that certain
software is not "as such" because it has technical effects and
circumvent the exception on software.

Actually, this notion of "software as such" and "software not as such"
is completely ridiculous. Just consider the following concepts
	- mathematics as such (vs. mathematics not as suc)
	- games as such (vs. games not as such)
	- intellectual methods as such (vs. intellectual methods not as such)
	- ideas as such (vs. ideas not as such)

Some of these sound probably really strange. Probably, many people did
not realise that the notion of "software not as such" was just as
meaningless as "mathematics not as such".

I think it would be much more fair and true to write "inventions
containing software can be patented in Europe" rather than "software as
such can not be patented".

> As you know, 13000 such "software patents" have been considered as valid
> in Europe by EPO, and also by national courts.

The European patent office has granted more than 13.000 patents on
invention which steps involve the use of software. That's fine in
theory. However, in many cases, the invention kernel is purely software
based and the technical effect is far from obvious. This is the case for
example of an invention which consists in printing cooking recepes in a
supermarket in order to create an economic incentive for custommers to
buy more. This invention was granted a patent by the EPO because it
supposedly contains technical effects (printing on paper, barcode
reading, etc.). 

However, according to reputable authors of Law in France, Germany and
Austria, many "software patents" granted by the EPO will probably never
be enforceable on software, even through a contributory infringement
lawsuit, because the Law  (EPC + internal Law) makes their scope far
narrower than the claims accepted by the EPO. The same authors of Law
tend to consider that the EPO has approved examination rules which
actually contradict the principles of the Munich convention. Again, this
makes much of the software patents granted by the EPO very weak, if not
completely void.

Therefore, any serious patent attorney should clearly warn its clients
that software patents granted by the EPO are very weak and may not be
enforceable. Not doing so could actually make a patent attorney face a
lawsuit in the future for knowingly providing wrong advice. Claiming
that "software can be patented in Europe" without any warning may even
be considered as misleading advertising.

On the other hand, it is of course very wise adise clients to file
software patents at the EPO and start building a patent portfolio
because no one knows yet if the EPC will be changed or not, and if the
exception on software is eventually removed, many patents filed a few
months ago or a few years ago (actually all basic e-commerce methods
werer filed at the EPO by US companies) may become valid and may be used
against about any e-commerce company in Europe. 

> So, filing software patent is not a forbidden practice. It is a practice
> beneficial for such firm couching the willpower of protecting innovations.

It depends. In theory, someone who repeatedly files patents on software,
knowing that software can not be patented, may be eventually sued for
abuse of Law. Same for business methods, intellectual methods, etc. 

> It?s not your case, and nobody has to criticize your business tactic.
> Please, accept that other people chooses other tactics.

You can not claim that "everyone should be free to choose its tactics"
if the tactics from one person involves creating trouble to others or
involves others to follow the same tactics. If software becomes truly
patentable in Europe, everyone will be forced to file software patents
in order to be able play the cross licensing game and survive.

JPS.





