[Patents] Krasser 1986: caselaw move toward swpat not permissible under EPC

[phm@a2e.de (PILCH Hartmut)]

Under

        http://swpat.ffii.org/stidi/korcu/indexen.html

you now find a reference to excerpts from Krasser's introductory
textbook on German and European patent law of 1986.  This book
explains in detail that many people demand that software should be
made patentable but that that is incompatible with the EPC and must be
left to the legislator to decide.

Similar opinions were stated by Gert Kolle in 1977, and this text 
treats Kolle as one of the main authorities of technicity doctrine.

Krasser cites a lot of court decisions that show exactly how the
concept of technical character has been applied and how even
would-be-inventions that directly related to the construction of
machines were rejected when it turned out that the would-be-inventive
idea was "a rule of calculation or organisation that is already
completed as a problem solution within the realm of reason before the
realm of physical causality is entered during its practical
application."

Krasser's textbook was written and published immediately before the
EPO embarked on an adventurous series of decisions, starting from
Vicom and Sohei, that effectively dismantled the concept of technical
character.  The book already warns about this possibility, which was
opened by vague wordings about "technical programs" in the EPO's new
examination guidelines of 1985.  In these guidelines, a program that
"changes the way in which a computer works" is considered technical,
and the question whether the change is "completed within the
mathematical concept of the Turing machine before the realm of
physical causality in entered during practical application" is not
asked.  We know the results.  See especially Winischhofer's
dissertation for an assemssment.

Unfortunately the Federal Court (BGH) forgot all its great words on
permissibility of rule-setting by caselaw and started following the
EPO on its slippery course toward unlimited patentability only 5 years
later.  At the time the demand for patent inflation in the writings
(GRUR) was simply overwhelming, since it had the backing of the EPO
and of AIPPI and other patent bar organisations as well as patent
departments of large corporations who fought exemplary cases up to the
BGH in order to obtain landmark decisions.

In its Seitenpuffer (sidebuffer) decision of 1991 it accepted that
reprogramming the structure of computer memory is "technical" and
therefore an invention.

It seems that the EPO, like some other European-level institutions, is
a kind of black hole in the democratic system of checks and balances.
When people want to do something that is known to be illegal (as
textbooks such as that of Krasser explained very convincingly), one
way to proceed is to push it at the level of an extra-territorial
international organisation.

   -> [43]Bernhardt & Krasser: Lehrbuch des Patentrechts -- Recht der
          Bundesrepublik Deutschland, Europäisches und Internationales
          Patentrecht:
          Prof Krasser of Munich Technical University rewrote this famous
          introduction to patent law of his older colleague Prof.
          Bernhardt in 1986 to adapt it to the new situation after the
          entry into force of the European Patent Convention (EPC).
          Krasser's explanations of the concepts of invention and
          technical character are closely founded on the German Federal
          Court (BGH) caselaw and extensively quote legal literature,
          especially of Gert Kolle. Krasser argues among other points:
          The invention concept of the EPC is based on the concept of
          'technical teaching', which is an unquestioned part of
          customary patent law worldwide and has been made explicit in
          detail by German courts. The "invention" is defined as a
          technical teaching, i.e. instructions on how to use natural
          (physical, material) forces to directly cause a
          physical/material effect. This can refer to dead or living
          nature and may extend to new laws of nature as they are
          discovered, but not to the laws of human reasoning (logics,
          mathematics etc). 'Rules of Organisation or Calculation' are
          not technical even when they are executed on a computer,
          because the problem solution is concluded and verified within
          the realm of reason before the realm of engineering (the
          technical field) is entered during the practical application.
          The catalogue of patentability exclusions in Art 52 EPC
          confirms this old German and international customary law and
          codifies it. This means that many important intellectual
          achievements of mankind must be denied patent protection.
          Recently many writers of legal literature have demanded that
          this 'discrimination against the non-technical' be loosened or
          discarded, especially in view of the growing importance and
          protection needs of the software industry. However the BGH
          consistently rejects this demand. According to the BGH, it is
          not permissible to work toward such an extension of
          patentability by means of caselaw. Not every important
          intellectual achievement with great economic potential needs to
          be protected by some means. The patent system is a system for a
          specific area of intellectual achievement. A lack of legal
          protection in another area of intellectual achievement does not
          indicate that patents are called for in that area. It may just
          as well indicate that the concerned area has a special need of
          keeping ideas freely available. In the non-technical areas,
          such a need arises from the fact that everybody can immediately
          apply and develop the new ideas in question without any
          investment in new equipment. If patents were to be granted for
          software or other non-technical achievements, this decision
          would have to be made by the legislator, and it would require
          careful consideration. However insufficient recent software
          copyright decisions of the BGH may appear to be, there are many
          reasons to doubt whether patents would really be a solution to
          the insufficiencies of a given copyright regime. It seems more
          likely that solutions are to be sought in a better adaptation
          of copyright to software, such as proposed by WIPO in 1977.



--
Hartmut Pilch
Federation for a Free Information Infrastructure        http://www.ffii.org/  ;
  
Protecting Innovation against Patent Inflation        http://swpat.ffii.org/
For a software patent free Europe PLEASE SIGN http://petition.eurolinux.org/