"condition of ..." amendment

[PILCH Hartmut <phm@a2e.de>]

This amendment proposal can gain support of from all parties,
especially by people with a weak understanding of software and a
strong sense for legal logics.

The justification is extremely long but needed for educational
purposes in and outside the Parliament.

Critical review would also be most welcome.

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

Article 4(2)

                             amendment                              
                                                                    
Member States shall ensure that      Member states shall ensure that
it is a condition of involving       it is a condition of           
an inventive step that a             constituting an invention in   
computer-implemented invention       the sense of patent law that an
must make a technical                innovation, be it              
contribution.                        computer-implemented or not,   
                                     must be of technical character.
                                                                    
                           justification                            
                                                                    
The Commission text opens several doors for unlimited patentability by
deviating from Article 52 EPC.

The EPO Examination Guidelines of 1978 explain Art 52 EPC as follows:
                                                                    
    There are four basic requirements for patentability:           

     1. There must be an "invention".                               
     2. The invention must be "susceptible of industrial            
        application".                                               
     3. The invention must be "new".                                
     4. The invention must involve an "inventive step".             

    In addition to these four basic requirements, the examiner      
    should be aware of the following two requirements that are      
    implicitely contained in the Convention and in the Regulations: 

     1. The invention must be such that it can be carried out by a  
        person skilled in the art [...]
     2. The invention must be of "technical character" [...]

The Commission text deviates from Art 52 EPC by merging the
independent requirement of "technical invention" (renamed to
"technical contribution") into the requirement of "inventive step".
This is counter-intuitive and theoretically inconsistent, as even the
European Commission implicitely admits in the Explanatory Memorandum:

        The presence of a "technical contribution" is to be assessed
        ... under inventive step.  Experience has shown that this
        approach is the more straightforward to apply in practice.

Indeed the approach has significant practical effects.  It opens an
infinite space of interpretation for those patent offices that conduct
a full substantive examination, such as the EPO and the German Patent
Office, while preventing other patent offices (such as French,
Italian) from rejecting patents on non-inventions.
                                                                    
Furthermore, treating "computer-implemented" inventions in a special
way, as suggested by the European Commission, runs counter to Art 27
TRIPs. And, as has been pointed out above, the term
"computer-implemented invention" itself may run counter to Art 52 EPC
by implying that algorithms framed in terms of generic computing
equipment (programs for computers) are patentable inventions.

The amendment solves all these problems by restating the structure of
Art 52 EPC as explained by the EPO's Examination Guidelines of 1978.

-- 
Hartmut Pilch, FFII & Eurolinux Alliance              tel. +49-89-18979927
Protecting Innovation against Patent Inflation       http://swpat.ffii.org/
150,000 votes 2000 firms against software patents    http://noepatents.org/