[Patents] EPO 1978: programs vs inventions

[phm@a2e.de (PILCH Hartmut)]

Under

        Guidelines for Examination in the European Patent Office
        http://swpat.ffii.org/vreji/papri/epo-gl78/

you can now find the first historical document, in which the newly
founded European Patent Office explains how the concept of invention
in the European Patent Convention is to be understood, especially with
regard to unpatentable teachings such as computer programs.  This
document very much resembles the 

        Eurolinux Regulation Proposal on the Invention Concept of the
        European Patent System with Special Regard to Programs for Computers
        http://swpat.ffii.org/stidi/javni/

especially in points 1 and 2 of 4.  The EPO text interprets "programs
for computers" in Art 52(2):

          A computer program may take various forms, e.g. an algorithm, a
          flow-chart or a series of coded instructions which can be
          recorded on a tape or other machine-readable record-medium, and
          can be regarded as a particular case of either a mathematical
          method (see above) or a presentation or information (see
          below). If the contribution to the known art resides solely in
          a computer program then the subject matter is not patentable in
          whatever manner it may be presented in the claims. For example,
          a claim to a computer characterised by having the particular
          program stored in its memory or to a process for operating a
          computer under control of the program would be as objectionable
          as a claim to the program per se or the program when recorded
          on magnetic tape.

Moreover, it exhorts examiners to ignore the claim language (verbal
clothing) and directly judge the core of the invention:

   In considering whether an invention is present there are two general
   points the examiner must bear in mind. Firstly, he should disregard
   the form or kind of claim and concentrate on the content in order to
   identify the novel contribution which the alleged "invention" claimed
   makes to the known art. If this contribution does not constitute an
   invention, there is not patentable subject matter. This point is
   illustrated by the examples given in [165]IV, 2.1 of different ways of
   claiming a computer program. As another example, if a manufactured
   article, which is itself of a kind which is patentable, happens to be
   known, then a claim directed to that article and distinguished from
   the known art solely by choosing a different colour for the article
   would not be for an invention unless the colour chosen provided a
   different technical (and not merely aesthetic) feature. On the other
   hand, any exclusion from patentability applies only to the extent that
   the application relates to the excluded subject matter or activities
   as such.
   
   Thus the exclusion might not apply if the invention also provides new
   technical features. This is illustrated, for instance, by the examples
   given in [166]IV, 2.1 under "aesthetic creations". As a further
   example, a gramophone record distinguished solely by the music
   recorded thereon would not be patentable; if however, the form of the
   groove were modified so that the record, when used with an appropriate
   pick-up mechanism, functioned in a new way (as in the first stereo
   record), there could be patentable subject matter.

This is all the EPO in 1978 said about the "as such" clause in Art 52(3).
Apparently this clause was not meant as a means of defeating common
sense but as another exhortation to use common sense when looking at
claim wordings.

The EPO 1978 Guidelines have however one weakness: they lack a
definition of what is technical.  It seems that in 1978 the work of
the German and other national courts on this subject had not yet
penetrated into the newly founded international office, and by 1985,
some judges of the Technical Board of Appeal had already started
blurring the borderlines, thus making it even more difficult for 
technicity to gain a foothold and forcing a revision of the
Examination Guidelines, which brought verbose ambiguity especially
into the sections related to computer programs.

In order to fill the gap of the technology definition, the Eurolinux
proposal drew its inspiration from a series of German decisions 


        Dispositionsprogramm (disposition program) 1976
        http://swpat.ffii.org/vreji/papri/bgh-dispo76/

        Walzstabteilung (rolling rods splitting) 1980
        http://swpat.ffii.org/vreji/papri/bgh-walzst80/

        Antiblockiersystem (anti blocking system) 1980
        http://swpat.ffii.org/vreji/papri/bgh-abs80/

        Betriebssystem (operating system) 1990
        http://swpat.ffii.org/vreji/papri/bgh1-bs90/

and textbooks based thereon.

The FFII has made these documents available online and largely
provided some English translations.

While it seems that the consultants who wrote the CEC Indprop
Consultation summary report are of the opinion that these documents
represent some "restrictive" and "radical" approach to the problem of
determining the limits of patentability, Prof. Lenz (scholar of German
and European law) and others have argued that the EPO and with them
the CEC Indprop Unit are championing an illegal approach (see the list
of literature in http://swpat.ffii.org/stidi/korcu/indexen.html).
Again, to their credit, it can be said that the question of technicity
is indeed now even less than in 1978 part of the curricula of patent
law experts today.  They cannot be expected to know anything about it.
Which is why the consultation produced mainly a pile of naive legal
arguments from the pro swpat side.

The question of legality and law interpretation is however, in the
words of "Dispositionsprogramm",

   ... not essential
   for this discussion, because also from a purely objective point of
   view the concept of technical character seems to be the only usable
   criterion for delimiting inventions against other human mental
   achievements, for which patent protection is neither intended nor
   appropriate. If we gave up this delimitation, there would for example
   no longer be a secure possibility of distinguishing patentable
   achievements from achievements, for which the legislator has provided
   other means of protection, especially copyright protection. The system
   of German industrial property and copyright protection is however
   founded upon the basic assumption that for specific kinds of mental
   achievements different specially adapted protection regulations are in
   force, and that overlappings between these different protection rights
   need to be excluded as far as possible. The patent system is also not
   conceived as a reception basin, in which all otherwise not legally
   privileged mental achievements should find protection. It was on the
   contrary conceived as a special law for the protection of a delimited
   sphere of mental achievements, namely the technical ones, and it has
   always been understood and applied in this way.
   
   Any attempt to attain the protection of mental achievements by means
   of extending the limits of the technical invention -- and thereby in
   fact giving up this concept -- leads onto a forbidden path. We must
   therefore insist that a pure rule of organisation and calculation,
   whose sole relation to the realm of technology consists in its
   usability for the normal operation of a known computer, does not
   deserve patent protection. Whether it can be awarded protection under
   some other regime, e.g. copyright or competition law, is outside the
   scope of our discussion.

--
Hartmut Pilch                                           http://phm.ffii.org/
Protecting Innovation against Patent Inflation        http://swpat.ffii.org/
80000 signatures against software patents         http://www.noepatents.org/