UK pressing EU for software patentability

[PILCH Hartmut <phm@a2e.de>]

Under

  http://www.patent.gov.uk/about/ippd/issues/index.htm#Software Patents

you find Robin Webb from the UKPTO speaking in the name of the UK
government, pressing for a revision of Art 52 EPC to legalise software
patents.  According to him this revision should take place at the
Diplomatic Conference in June of this year.

As seen at the UKPTO's own consultation, This text again seems to be of
slightly higher moral quality than the texts from the EPO and Brussels,
but it still plays hide-and-seek using the gibberish "technical",
pretending that it wants to patent only teachings that reveal something
new about material phenomena while in reality advocating to make
everything patentable.

---------------------------------

Software Patents

The UK's position on the patentability of software is set out in
"Should Patents be Granted for Computer Software or Ways of Doing
Business? The Government's Conclusions" which was published in March
2001.

This reports the outcome of the consultation process which the
Government began in the autumn of 2000. The central conclusion is to
reaffirm the principle that patents are for technological
innovations. Software should not be patentable when there is no
technological innovation, and technological innovations should not
cease to be patentable merely because the innovation lies in
software. However, there is a need for the law to express this more
clearly, and for this clarification to take place as soon as
practicable. Ways of doing business should remain unpatentable.

The law on what is patentable is governed by the European Patent
Convention (EPC). This treaty is not a European Union instrument (and
indeed some parties are not EU countries). However, in a separate
development, the European Commission consulted towards the end of
2000 with a view to bringing forward a proposal for a directive on
the patentability of software. If there were to be a directive it
would be necessary to amend the EPC to bring it into line with the
directive. In either case any change to the law will take place at
European level, and the Government is working to win its European
partners over to the view expressed above.

To date, however, the European Commission has not been able to come
forward with a proposal for a directive. The Government believes
that, because clarification of the law is urgently needed, there is a
limit to how long we should be prepared to wait for a proposal for a
directive. During the latter part of 2001 it sought to persuade its
EPC partners of this. It has argued that if a revision conference (ie
a meeting to agree changes to the EPC) takes place in 2002 then the
conference should go ahead and amend the EPC provisions on software
if no proposal for a directive had appeared before then. The
Government expressed this view at the October meeting of the European
Patent Office Administrative Council (the organization’s governing
body).

In December the Government went further, and tabled an illustrative
draft for discussion purposes of how article 52 of the EPC might be
revised to express the policy conclusions it had reached and
published in March. To view this illustrative draft, and associated
notes, click here.

In October and December it seemed likely that a revision conference
would be called for June 2002, primarily to amend the EPC to
accommodate the emergence of a European Community Patent. However,
the negotiations on the community patent have not in fact advanced to
that point, and it is no longer clear that a revision conference –
and thus an opportunity to seek amendment to the EPC’s software
provisions – will take place in June.

The Government continues to press for amendment of the EPC’s
treatment of software, and would favour a revision conference in June
even if the community patent is not ready to be considered at that
point – unless, of course, a proposal for a directive on software
patents has appeared by then.

For further information, please contact:

     Mr Robin Webb
     Intellectual Property Policy Directorate
     The Patent Office
     Concept House
     Cardiff Road
     Newport
     South Wales
     NP10 8QQ

     Tel: +44 (0)1633 814767
     Fax: +44 (0)1633 814922
     E-Mail: robin.webb@patent.gov.uk


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See also

http://www.patent.gov.uk/about/ippd/issues/software.htm

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Software: Illustrative Amendment of EPC Article 52 for Discussion
Purposes

The UK Government published its position in March 2001. It is that
the principle that software should only be patentable where there is
a technical effect is right, but that action is needed to clarify the
law. Business methods should remain unpatentable.

The Government believes that in expressing this position revision of
the EPC should meet several conditions:

the objective of revision should be to clarify, rather than change,
what is patentable; the change to the EPC should be the minimum
necessary for the purpose. Keeping as close as possible to the
existing wording will also minimise the risk of unforeseen legal side
effects that can result from any change to wording; the end result
must be clear, so the software industry can understand what can and
cannot be patented. This also points to keeping changes simple –
complex wording would inevitably lead to a long period of uncertainty
as a new body of case law on its interpretation gets established; the
Convention should as far as possible continue to treat every
exclusion in the same way, without introducing special rules for
programs or business methods; patentability should not depend on the
right form of claim.

Illustrative amendment of article 52 for discussion purposes

52(1) European patents shall be granted for any inventions, in all
fields of technology, provided that they are new, involve an
inventive step and are susceptible of industrial application.

52(2) The following shall not be regarded as inventions within the
meaning of paragraph 1 unless in their inventive step they make an
inventive technological contribution to the state of the art:

(a) mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing
games or doing business, and programs for computers;

(d) presentations of information.

They shall not be regarded as making a technological contribution
merely [only?] because they use or are used by technological devices
[or processes] such as a tool, computer or communications system.

52(3) Discoveries and scientific theories as such shall not be
regarded as inventions within the meaning of paragraph 1.

[The old 52(3) is deleted.]

Notes

1. The approach we have adopted treats all exclusions the same way so
far as possible and avoids introducing special rules for programs or
business methods. (The reference to a "tool" at the end of 52(2)
emphasises this: a painting does not become patentable merely because
the painter uses a paint brush, and likewise a business method should
not become patentable merely because it uses a computer.) The only
exceptions are discoveries and scientific theories, where the words
‘as such’ have not led to uncertainty, and which would not fit well
into the wording of 52(2). Unlike all the other exclusions they
relate to what is essentially a pre-existing state of affairs, so
talking about their "inventive step" and "technological contribution"
doesn’t make sense.

2. The wording keeps the "technical" requirement in Article 52 whilst
acknowledging that the assessment cannot be divorced entirely from
the other assessments required by Article 52(1). 3.We have considered
simpler versions for the wording of the first part of 52(2), but they
do not convey the required meaning:

"unless they make an inventive technological contribution" could
cause uncertainty because 52(1) would be using one term (inventive
step) whilst 52(2) would be using a different one (inventive
technological contribution).

"unless in their inventive step they make a technological
contribution" could be interpreted as meaning that, say, a business
method whose inventive step includes both technological and non-
technological features could be patented even if the technological
contribution was obvious, so long as the invention as a whole was not
obvious.

4. We have adopted the word "technological" rather than "technical"
simply because when we consulted commercial interests, we discovered
that the financial industry were confused by the existing wording as
they talk about the work of, say, an accountant as being "technical".

5. It is questionable whether " or processes " is really necessary,
but we felt it was probably best to include it.

Last updated 13 February 2002

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