Out-Law News 4 min. read
21 Feb 2002, 12:00 am
Under the proposal, only those inventions whose operation involves the use of a computer program and which make a "technical contribution" - in other words which contribute to the "state of the art" in the technical field concerned - would be eligible for patents. However, computer programs as such would not be eligible for a patent under the proposal. Nor would business methods that employ existing technological ideas and apply them to, for example, e-commerce. These would continue, where appropriate, to be covered by copyright law or the law of confidentiality.
Software can currently, in certain circumstances, be patented by applying to either the European Patent Office (EPO) or the national patent offices of the Member States, but the conditions for patentability can vary. The proposed Directive would harmonise these conditions.
Patents and copyright are complementary tools for the protection of intellectual property. In very broad terms, the distinction in the field of information technology is that copyright protects original computer programs (including instruction manuals) against unauthorised copying, while patents on the other hand can be used to protect underlying technical ideas and principles. However, patents give more powerful protection, giving the owner a 20-year monopoly. Copyright lasts longer, in most cases for 70 years, but is generally less straightforward to enforce.
The proposal takes as its basis the concept of "technical contribution" as an essential requirement of any patentable invention. This approach is consistent with the case law developed over the years in the EPO and the Member States. It implies that a computer-implemented invention which makes a "technical contribution" to the state of the art, which would not be obvious to a person of normal skill in the field concerned, is more than just a computer program "as such" and can therefore be patented.
The Commission gave the following example cases in which a "technical contribution" has been found:
On the other hand, any invention that was concerned solely with the nature of data or the way in which a particular application operated on data would not make a technical contribution and so could not be protected by a patent. The mere computerisation of a method or technique that was already known, or the computer implementation of a business or similar method (such as a new mathematical model for tracking movements of the stock market) would not qualify as patentable inventions either.
According to the proposal, a patent would normally cover inventive concepts and principles that underlie particular components of a software program. Just like a complex piece of physical machinery such as a car or a refrigerator, a software application may depend on its proper functioning on many different components, only some of which could be patented. This is an important distinction with copyright law. While copyright protects the entire code of an operating system, game or piece of business software against unauthorised copying, distribution and use, a patent would cover only the specifically-patented components.
The proposal would not allow patents to be granted for computer programs on their own, i.e. in isolation from a machine on which they may be run. This marks a different approach to the direction taken until now by the EPO and some case law in Member States.
In recent decisions, patents have under certain conditions been allowed which contain claims for computer programs on their own, for example on a disk or even as a signal transmitted over the internet. The Commission considered that such claims could be said to be contrary to the EPC, which does not allow patents for computer programs "as such". In response to concerns expressed at consultation, the Commission has decided not to follow the direction taken by case law in this important respect. Accordingly, the proposal would not allow claims of this type to be considered valid.
The Directive would have no direct legal effect on the European Patent Office. However, once the Directive was implemented, the Commission would consider taking action to resolve any inconsistencies in the context of the European Patent Convention. In any case, European Patents, once granted, become subject to national laws, so any patents granted after the Directive took effect and which were inconsistent with its provisions would need to be amended to bring them into conformity (or be revoked).
The main difference between the Commission’s approach and that taken by the US and Japan lies in the requirement for "technical contribution". Japanese law does not have this as such, but there is in Japan a doctrine which has traditionally been interpreted in a similar way: the invention has to be a "highly advanced creation of technical ideas by which a law of nature is utilised".
In the US on the other hand, a patentable invention must simply be within the technological arts. No specific technological contribution is needed. The mere fact that an invention uses a computer or software makes it become part of the technological arts if it also provides a "useful, concrete and tangible result". Among other things, this has meant that in practice in the US, restrictions on patenting of business methods (apart from the requirements of novelty and inventive step) are negligible.
Commisssioner Frits Bolkestein said the US position “goes too far,” adding that the Commission “will take American complaints on the chin.”
The Commission’s proposal will now be submitted to the EU's Council of Ministers and the European Parliament for adoption under the so-called 'co-decision' procedure, which requires both bodies to agree on its terms. When agreed, Member States will be given time to implement its terms in their national laws.