[Patents] the IDEA device claim and art 52 EPC

[phm@a2e.de (PILCH Hartmut)]

---------- Forwarded message ----------
From: PILCH Hartmut <phm@a2e.de>
Subject: RE: could you amend the statistics if they are wrong
To: intprop-l@topica.com

Axel H Horns (patent lawyer and author of expert opinion to German
government) explained the central argument of his expert opinion:
...

> > > For example, take something like claim 1 of EP 0 482 154 B1. The
> > > claimed subject-matter is related to the IDEA cipher. As a matter of
> > > fact, this claim can be violated by a suitable ASIC circuit hardware
> > > as well as by a certain piece of software running on an Intel
> > > Pentium CPU.
> > >
> > > The generic clause of this claim reads: "A device for the conversion
> > > of in each case a given first binary digital block of a first length
> > > into an associated second binary digital block of a equal length
> > > with the use of at least one freely selectable binary control block"
...
> > The first and most consistent way to achieve it is to follow the
> > doctrine of technical invention.  To say it in the language of
> > Dispositionsprogramm and Walzstabteilung:  the main claim teaches a
> > rule of organisation and calculation, solution to a schematic problem
> > which is already completed before during its practical application on
> > known hardware the realm of technology is set foot upon.  It does not
> > matter with what verbal clothing the calculation rule is claimed: be
> > it a disk with a program stored on it or an arrangement of a known
> > processor with known devices with the program loaded in memory or
> > executed in the predetermined way.
>
> This is not the problem here. The IDEA cipher hardware chip can be
> built by combining electronic circuits without any structure that
> looks like a CPU. Its a real technical hardware device apart of any
> processor/software combination and I do not see how patentability of
> such devices can be denied. So, a claim directed to a "device" is not
> some kind of "verbal clothing" here. An IDEA hardware ASIC chip is a
> technical "device" in the very core of the meaning of that concept.

It may be a technical device, but the main claim does not contain a
technical teaching on how to construct such a device.  It only contains a
teaching about schematic relations between abstract entities.  The
application of this logical teaching to the field of technology is then
left to the man skilled in the art to perform, based on publicly available
prior knowledge.

> However, if a "device" performing IDEA encryption is an allowable
> patent claim subject-matter the question automatically comes up how
> to deal _in view of claim infringement and litigation_ with any
> combinations of processor/software behaving also like an IDEA device.

Devices are not patentable.  Teachings are.

> This is the reason why the concept of "software patent" is somewhat
> misleading, to say the least. At the time being the debate is not
> about patent claims directed to "software" but claims directed to
> some functionality which can, on the infringement side, be
> implemented by combinations of processor plus software. Hence, it was
> healthy that the CEC came up with the concept of "computer-
> implemented" or "computer-implementable" inventions seen as subject-
> matters of patent claims.

It was not healthy, because computer-implementability is not the issue, as
your IDEA example btw nicely demonstrates.  As you said yourself: an ASIC
is not a computer, but nonetheless the kind of function claim you quoted
above is quite problematic, since it teaches no new way of directly
achieving a success by planned use of natural forces.

The problem is whether abstract functionalities / rules of organisation
and calculation can be patented.

On our analysis of the consultation

  European Consultation on the Patentability of Computer-Implementable
  Rules of Organisation and Calculation (Programs for Computers)
  http://swpat.ffii.org/vreji/papri/eukonsult00/

we therefore reworded the CEC question so as to conform to the European
legal doctrine of the EPC and its time.

> The only "cure" for effective exclusion of combinations of computer
> programs plus processor from patent law would be to ban each and
> every subject-matter from patentability which is "computer-
> implementable", i.e. which has some inherent potential to be
> implemented by means of some software/processor combination.  This
> would mean that e.g. chemical compounds would be patentable but most
> electronic devices would be not due to the general principle of
> interchangeability of hardware and software in modern electronics
> technology.

There is no such general principle.  Software can be implemented in
hardware but not vice versa.  I am a bit disappointed here, because you
know Kolle's article of 1977, which has a detailed argumentation on this.

> Please don't say that this distinction "merely relates to claim
> language". The claim language is the essential definition of the
> invention. We do not have any other means than claim language for
> differentiating between subject-matters covered by a patented
> invention and all th other subjct-matters not covered. There is no
> room for something like a "metaphysics of the invention".

There even less room for formalism in this difficult debate.
A patent is a deal: in return for disclosure of a teaching you get a
monopoly.
The claim describes the monopoly, not the teaching.
But it is not difficult to find out where the teaching lies.
Often it can even be found by formalistic means, e.g. when the claim
takes the form

        A device for .... using ... , characterised by ...

then the invention-relevant teaching usually starts after "characterised
by".
But this question is far to serious to let any formalism take precedence
over formally unbound (i.e. "metaphysical"?) questioning of where the
contribution lies.

> As you can see above, the _real problem_ of the side-effects of
> patents to the software business is on the _patent infringement
> side_, not on the side of the discrimination of patentable subject-
> matters. Hence, the entire debate on Article 52 EPC is misleading:
> The real question is how the infringement courts shall deal with
> combinations of processor plus software allegedly infinging a patent
> claim. This can, however, not be clarified within the EPC because
> pursuant to Article 64 (3) EPC details of infringement regulations
> are left to the legislation of the EPC Member States.

What is an infringement is determined by
 - what is an invention (art 52)
 - general limits to monopolisation (art 64 + national rules)

The current debate is correctly focussing on the art 52 problem.

If a computer program (rule of organisation and calculation, nicely
explained by the EPO guidelines of 1978) cannot be an invention, then any
claim that could cover a computer program would be a claim to a
non-invention and therefore impermissible or at least invalid as far as a
computer program is covered.

If

> If there are problems with patents on computer-implementable subject-
> matters (and I think that there are such, e.g. in view of OSS), the
> proper way to deal would be to amend national law e.g. setting
> certain exemptions for communicating computer software solely in such
> situations where the textual aspect of computer software is taking
> precedence over the behavioural aspect obtainable when running the
> text on a matching processor.
>
> This is one of the points of the Lutterbeck-Opinion delivered to the
> German Government in December 2000
>
> <http://www.sicherheit-im-internet.de/download/Kurzgutachten-Software
> -patente.pdf>

> [in German, sorry] to which I contributed as a co-author.

see also my critical review

        http://swpat.ffii.org/vreji/papri/bmwi-luhoge00/indexen.html

> The impression might come up that some anti-swpat activists (not
> necessarily those who are on this list) want to use the debate on
> patents on computer-implementable inventions in order to invoke a
> complete crackdown of the patent system.

Who could these activists be, if not myself?

I would say it the other way around:  some pro-swpat activists (not
necessarily those who are on this list) want to use the debate on patents
on computer-implementable rules of organisation and calculation to invoke
an extension of the patent system to the realm of the human mind and
thereby its complete collapse and demise in disgrace.

Probably it would be fairer to say that on both sides there is a lot of
anxiety and cluelessness.  But that means almost the same thing.

> Anyway, I would be highly interested to learn what Jozef Halbersztadt
> would answer to my original question ...
>
> > Another possible option (less consistent but maybe desirable for
> > political or economic reasons) would be to allow
> > non-user-reprogrammable computers (such as typical embedded systems)
> > to be patented and to accept that such patents are of reduced value
> > because they can be circumvented by software solutions.  Economists
> > tend to like the idea of "weak protection".
>
> It would be utmost difficult to draw a clear line between "user-
> reprogrammable computers" and "embedded systems" in court.

Indeed this might give rise to some difficult discussions, which is why I
would prefer the embedded stuff (and things like IDEA) to be handled in
sui generis law.

But difficulties of delimitation are quite commonplace in law.  They don't
necessarily preclude any choices which might be taken for some purposes of
economic policy which I am not aware of but which might exist.
Discussions about legal doctrines should not lead to the elimination of
all choices except one favorite but rather to a comprehensive listing of
choices, such as the one that was attempted by the

        Stimuler l'Innovation dans la Societe d'Information
        http://www.pro-innovation.org/

study.  This is one of my points of criticism against the Lutterbeck
opinion cited above.

regards

--
Hartmut Pilch                                           http://phm.ffii.org/
Protecting Innovation against Patent Inflation        http://swpat.ffii.org/
85000 signatures against software patents         http://www.noepatents.org/

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