Re: Summary of legal arguments

[Edward Avis <epa98@doc.ic.ac.uk>]

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As I mentioned on this list I tried to find a short summary of the
current legal position of swpats under the EPC, in order to provide a
counterweight to an article blithely asserting that software was now
fully patentable which was handed out as part of an introduction to
law course.  I didn't find exactly what I wanted on the FFII site,
so a few days ago I contacted the lecturer and explained the arguments
myself:

>I'm a student at Imperial attending your introduction to English law
>lectures.  Part of the handouts is an article by a patent lawyer
>'dispelling a few myths' on patentability of computer programs in
>Europe.
>
>The article is factually accurate, but it tells only one side of the
>story.  In particular it completely ignores the question of whether
>the patents that the European Patent Office is granting for software are
>actually enforceable in practice.  If patents are granted but national
>courts will not enforce them, then in practice software is not
>patentable in Europe.
>
>OK - you probably know all this - but allow me to summarize.
>
>Since section 52(2) of the EPC specifically excludes 'programs for
>computers' from the scope of patentability
>(<http://swpat.ffii.org/stidi/epc52/indexen.html>), it seems that the
>EPO has overstepped its authority in ignoring this limitation.  It all
>depends on whether the courts accept the EPO's interpretation in
><http://www.european-patent-office.org/dg3/pdf/t971173ep1.pdf> that a
>computer program with a 'further technical effect' is not a computer
>program as such, and therefore patentable.
>
>As a layman it seems that the EPO has managed to creatively reinterpret
>the law by making strange assumptions about what the legislator 'really
>intended' (which is different to what the law says) and by creating a
>distinction between 'computer programs as such', which are not
>patentable, and 'computer programs not as such', which are.  In practice
>all computer programs fall into the second category.  You have to doubt
>whether courts in member states would agree that this is the true
>meaning of the law.
>
>It seems that even those who favour patentability of software have their
>doubts on this point, hence the lobbying to delete the exclusion from
>the EPC in order to match current EPO practice.  If software is
>patentable at present, why the hurry to change the law?  The explanation
>is that the law needs 'clarifying' to match the recent decisions of the
>EPO.  The alternative, of course, is to make the patent office's
>decisions conform to the law.
>
>To my knowledge there have never been any successful infringement cases
>in Europe for patents on software!
>
>An initiative last year by the Commission to change Article 52 foundered
>due to opposition from member states.  They have voted to keep the
>status quo for now, and any legalization of software patents looks
>unlikely in the near future.  So on the question of whether software can
>be patented in Europe, I think the answer must currently be no.
>
>I have been trying to find a concise summary of these arguments,
>preferably written by a lawyer.  <http://swpat.ffii.org/indexen.html>
>has lots of good material, but most of it is in German.  I also need to
>find out more about the position of British courts on software
>patentability and their interpretation of the EPC, I don't know if there
>have been any cases yet.  Again the site explains what is happening in
>Germany (one case referred upward to the federal court, deferred
>indefinitely) but not here.
><http://swpat.ffii.org/stidi/trips/indexen.html> argues that software
>patents are not in fact required by TRIPS.
>
>Just printing out Article 52 and the EPO's 1998 decision should be
>enough to convince most people that there is something a little fishy
>going on:
>
>    Article 52: Patentable Inventions
>
>    1. European patents shall be granted for inventions [ in all fields
>       of technology ], as far as they are new, involve an inventive
>       step and are susceptible of industrial application.
>    2. The following in particular shall not be regarded as inventions
>       within the meaning of paragraph 1:
>         1. discoveries, scientific theories and mathematical methods;
>         2. aesthetic creations;
>         3. schemes, rules and methods for performing mental acts,
>            playing games or doing business, and programs for computers;
>         4. presentations of information.
>    3. The provisions of paragraph 2 shall exclude patentability of the
>       subject-matter or activities referred to in that provision only
>       to the extent to which a European patent application or European
>       patent relates to such subject-matter or activities as such.
>    4. (exclusion for medical techniques)
>
>
>The EPO originally interpreted this as written, as explained for example
>in its 1978 and 1985 examination guidelines.  But gradually patents for
>computer programs started being granted, under the guise of being
>patents for technical processes, until in 1998 the EPO ruled:
>
>
>    The combination of the two provision (Article 52(2) and (3) EPC)
>    demonstrates that the legislators did not want to exclude from
>    patentability all programs for computers.  In other words the fact
>    that only patent applications relating to programs for computers as
>    such are excluded from patentability means that patentability may be
>    allowed for patent applications relating to programs for computers
>    where the latter are not considered to be programs for computers as
>    such.
>
>    (several more paragraphs explaining carefully that what the law
>    says is not what it really means, page 12 of the document referenced
>    above)
>
>The distinction is based on whether a program has a 'technical
>character'.  But all computer program claims can be phrased in such a
>way that they have a 'technical character' and thus count as computer
>programs not as such.  Therefore, the EPO has effectively ignored the
>explicit exclusion in 52(2).  Will the courts agree with this
>interpretation?

I just got back a message agreeing with the points I made, so I'm
confident of not getting a one-sided explanation of the legal position.
I would still like to find or produce a short handout to students
explaining the issues, I might write one myself but that would be a bit
odd when I'm a student taking the class.

The lecturer also asked:

>The interesting question is - why does the EPO feel the need to do
>this?  Does the American position on the patentability of software
>influence the EPO?

- -- 
Ed Avis <epa98@doc.ic.ac.uk>
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