Patentability of Software

by

Paul Van den BulckPartner ULYS Law Firm

WWW.ULYS.NETpaul.vandenbulck@ulys.net

I. Scope : computer-implemented invention ?

Invention

whose implementation involves the use of a computer, computer network or other programmable apparatus,

the invention having one or more features which are realised wholly or partly by means of a computer program.

But ambiguity : also mere software

II. Examples :

Mobile telephones;

Refrigerators and washing machines

DVD players

Medical imaging (X-ray, NMR)

Anti-lock braking systems (ABS) for cars

Aircraft navigation systems

Etc,..

Mere software ?

III. International situation

1) Copyright

WIPO copyright treaty December 20, 1996 (art. 4) :

« Computer programs are protected as literary works within the meaning of Article 2 of the Berne Convention. Such protection applies to computer programs, whatever may be the mode or form of their expression. »

A. WIPO

2) Patent

Paris Convention for the Protection of Industrial Property is silent

concerning the protection of softwares by patents

B. TRIPs agreements (Agreement on Trade-Related Aspects of Intellectual Property Rights)

1) Copyright

Article 10§1 : « Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention.  »

2) Patent

Article 27.1:

« Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.

(…), patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.”

A. Copyright

Directive of 14 May 1991 on the legal protection of computer programs Art 1. : “In accordance with the provisions of this Directive, Member States shall protect computer programs, by copyright, as literary works within the meaning of the Berne Convention for the Protection of Literary and Artistic Works.”

B. Patent

Nothing but … (2002-2005)

IV. Community legal framework

European Patent Office

Non EU institution (Switzerland, Turkey, Croatia, Macedonia, Serbia, etc….)

Inter states body : 31 member states

Grant a “bundle” of national patents

V. “European” framework : EPO

(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1 :

(a) discoveries, scientific theories and 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.

Patent

European Patent Convention (article 52) :

(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.

Reason of the exclusion of article 52.2 : absence of technical character Indeed

EPC sets out the condition of patentability : novelty, inventive step and industrial application

However no definition of invention (process/product)

EPO legal tradition : invention should be reserved for technical creations

Technical ?

According to EPO :

the subject matter for which protection is sought must therefore have a technical character, more precisely, involve a “technical teaching”, that is an instruction addressed to a skilled person as to how to solvea particular technical problem (rather than, for example, a purely financial, commercial or mathematical problem) using particular technical means

But is the word “technical” discriminating ?

Art. 52.3 of EPC : “As such”

The exceptions have to be interpreted narrowly;

therefore : inventions having a technical character that are or may be implemented by computer programs may well be patentable (for ex. ABS)

But quid for mere software ?

VI. Evolution

T 208/84 “VICOM” : the claim directed to a subject-matter for controlling or carrying out a technical process is patentable irrespective of whether it is implemented by hardware or by software

classical doctrine : technical means + non technical means = patentable

The principle = the decision to carry out a technical process by software or other means depends on economic and technological factors

Confirmed by T26/86 “Koch &Sterzel” (X-ray equipment designed for radiological imaging using a computer program)

T 1173/97 IBM and T 935/97 IBM : new step –software as such-

Claims to computer products (software on a data carrier : CD-Rom, etc…)

Patentable if there is a “further technical effect” (an effect that goes beyond the normal physical effect (for ex. flow of electric current) seen when programs runs

“further technical effect” could be for ex. “more secure operation of the brake of a car”

New doctrine : technical problem/technical solution/non technical means “at all” –software as such-

But may wonder what is patentable : brake or software ?

VII. Comparison with Business methods

As such : not patentable

Decision T258/03 : Method carried out by means of the Internet was denied because there was no technical contribution to the prior art, as the technical implementation of the improved auction rules was done by conventional means of a computer and a computer and a computer network

Conclusion :

Brake : Technical results/technical and no technical means

Computer program : further technical effect (potential technical effects for brake)

Business methods : non technical results/no technical means

So finally what about the “technical teaching” ?

VIII. Pending Belgian litigation

First patent : Method of transferring data being stored in a database

Second : New system and method for performing personalised interactive automated electronic marketing of the marketing service provider

Difference :

“Technical gravy” (formal –not in depth- approach of the claims)

IX. Interactions EPO/EU/National states

Legislation Obvious influence of the case law of EPO on the proposition of legislation of the EU :

Proposition of Directive of software patents/Directive biotech patents

Harmonisation but also resistance (software : national parliaments/Biotech : differences in implementations)

Way back of the EU legislation in the EPO Regulation (Directive Biotech patents integrated in the implementing regulation of the EPO)

Case law National jurisdictions are not bind by the decisions of the EPO (grant or maintain)

National implementation is sometimes different from the EPO case law (Biotech)

National feelings is sometimes different from the EPO (patent-Netherlands)

Conclusion : depends on the “culture” of the jurisdiction (resistance-independence, etc…/respect-ignorance, etc..)

cfr. “Epilady” case

X. Improvements

Change of the “tangible/concrete” approach of the EPO

Definition of “technical” to characterized the invention

NB : proposition to change art. 52.1 and 52.2.c of the EPC (trips)

Institutional limits of the EPO

Success since more than 30 years must not hide the limits

Vast majority of technicians and minority of “technicians of the law” in the recourse instance (the questions raised are more and more social and legal and interest the citizens –directive patent software-)

No “separation of powers” : same institution grant and has jurisdictional power (answer directive community patent)

QUESTION

S &WWW.ULYS.NET

paul.vandenbulck@ulys.net

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