Select Committee on European Union Forty-Ninth Report


PATENTABILITY OF COMPUTER-IMPLEMENTED INVENTIONS (6580/02)

Letter from the Chairman of the Committee to Melanie Johnson MP, Parliamentary Under Secretary of State for Competition, Consumers and Markets Department of Trade and Industry

  The draft Directive was considered by Sub-Committee E (Law and Institutions) at its meeting on 24 April. The Committee decided to clear the document from scrutiny. We would, however, be grateful if you could keep the Committee informed of developments. In particular we note that you are consulting interested parties on the text of the Commission's proposal. It would be helpful if you could provide us with a summary and brief report of the outcome of that exercise. The Committee reserves the right to re-examine the proposal in detail when the results of your consultation are available.

25 April 2002

Letter from Melanie Johnson MP, Parliamentary Under Secretary of State for Competition, Consumers and Markets to the Chairman

  In March the Department submitted to you an Explanatory Memorandum on the Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions. The Memorandum noted that we have invited UK interests to comment on the proposal, and in April you asked me to supply you with a summary and brief report of this consultation. I now attach a report on the comments we received.

30 October 2002

Comments Received by the Patent Office on the Proposed European Directive on the Patentability of Computer-Implemented Inventions

  In February the European Commission published its Proposal for a Directive of the European Parliament and of the Council on the Patentability of Computer-Implemented Inventions.

  The Patent Office invited views on how far the draft directive reflected the policy position the Government had taken in March 2001, following a consultation in the UK on the substantive issues, in Should Patents Be Granted for Computer Software or Ways of Doing Business? The Government's Conclusions. (The central conclusion was to reaffirm the principle that patents are for technological innovations. Software should not be patentable when there was no technological innovation, and technological innovations should not cease to be patentable merely because the innovation lies in software. However, there was 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 invitation to comment was sent to all those who had responded to that consultation, as well as being made generally available via the Patent Office website.

  Comments on the draft were received from 32 respondents including representative organisations, companies, individuals (particularly software programmers, engineers and consultants), academics and journalists.

  Of those respondents who offered views on the draft directive (rather than revisiting topics already fully explored in the previous consultation), all welcomed the stated purpose of the proposal—to enshrine and clarify the status quo—which they recognised coincided with the Government's position.

  However, some felt that the proposal should be clearer. They saw a need for the unambiguous exclusion from patentability of business methods implemented in a technically routine way.

  There was also concern that to exclude claims to computer program products either on their own or on a carrier (such as a floppy disk or CD Rom) conflicts with the existing practice in Europe. These respondents viewed this as a significant defect because it would increase complexity, and disadvantage European industry by making it harder for patent-holders to assert their patent rights because they would only be able to sue suppliers of infringing software for contributory, rather than direct, infringement.

  The Government has noted the concerns of respondents, including the desire for an explicit statement of what could not be patented, and for provisions on the form of claim to reflect the existing position in Europe.

Letter from Melanie Johnson MP, Parliamentary Under Secretary of State for Competition, Consumers and Markets, to the Chairman

  In March the Department submitted to you an Explanatory Memorandum on the Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions. In April your committee cleared the memorandum. On 31 October I sent you a report on the comments on the proposal which we received from our consultation with UK interests.

  On 8 November the Presidency submitted an amended text to the Council (Competitiveness), which meets later this week, for approval as the basis of a common approach.

  I attach the text. I intend to support it because it is closer to the Government's objectives than the Commission proposal. The significant changes are:

    —  it makes clearer the requirement that patentable software inventions must be technical;

    —  it explicitly excludes patents for non-technical inventions such as methods of doing business;

    —  it authorises claims for programs on "carriers" such as disks, and thereby conforms with the current position in Europe which allows innovative companies effective redress against suppliers of programs which infringe their patents.

    —  As such it also meets the major concerns identified in our consultation earlier this year.

12 November 2002

Text of 8 November on the basis of which the Presidency Invites The Council (Competitiveness) to consider whether it can adopt a common approach on the proposal for a Directive

Proposal for a Directive of The European Parliament and of the Council on the patentability of computer-implemented inventions

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

  Having regard to the Treaty establishing the European Community, and in particular Article 95 thereof,

  Having regard to the proposal from the Commission,

  Having regard to the opinion of the Economic and Social Committee,

  Acting in accordance with the procedure laid down in Article 251 of the Treaty,

  Whereas:

    (1)  The realisation of the internal market implies the elimination of restrictions to free circulation and of distortions in competition, while creating an environment which is favourable to innovation and investment. In this context the protection of inventions by means of patents is an essential element for the success of the internal market, effective and harmonised protection of computer-implemented inventions throughout the Member States is essential in order to maintain and encourage investment in this field.

    (2)  Differences exist in the protection of computer-implemented inventions offered by the administrative practices and the case law of the different Member States. Such differences could create barriers to trade and hence impede the proper functioning of the internal market.

    (3)  Such differences have developed and could become greater as Member States adopt new and different administrative practices, or where national case law interpreting the current legislation evolves differently.

    (4)  The steady increase in the distribution and use of computer programs in all fields of technology and in their world-wide distribution via the Internet is a critical factor in technological innovation. It is therefore necessary to ensure that an optimum environment exists for developers and users of computer programs in the Community.

    (5)  Therefore, the legal rules as interpreted by Member States' courts should be harmonised and the law governing the patentability of computer-implemented inventions should be made transparent. The resulting legal certainty should enable enterprises to derive the maximum advantage from patents for computer-implemented inventions and provide an incentive for investment and innovation.

    (6)  The Community and its Member States are bound by the Agreement on trade-related aspects of intellectual property rights (TRIPS), approved by Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-94). Article 27(1) of TRIPS provides that 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. Moreover, according to TRIPS, patent rights should be available and patent rights enjoyable without discrimination as to the field of technology. These principles should accordingly apply to computer-implemented inventions.

    (7)  Under the Convention on the Grant of European Patents signed in Munich on 5 October 1973 and the patent laws of the Member States, programs for computers together with discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, and presentations of information are expressly not regarded as inventions and are therefore excluded from patentability. This exception, however, applies and is justified only to the extent that a patent application or patent relates to such subject-matter or activities as such, because the said subject-matter and activities as such do not belong to a field of technology.

    (7a)  Accordingly, a computer program as such, in particular the expression of a computer program in source code or object code or in any other form, cannot constitute a patentable invention.

    (8)  Patent protection allows innovators to benefit from their creativity. Whereas patent rights protect innovation in the interests of society as a whole; they should not be used in a manner which is anti-competitive.

    (9)  In accordance with Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs, the expression in any form of an original computer program is protected by copyright as a literary work. However, ideas and principles which underlie any element of a computer program are not protected by copyright.

    (10)  In order for any invention to be considered as patentable it should have a technical character, and thus belong to a field of technology.

    (11)  It is a condition for inventions in general that, in order to involve an inventive step, they should make a technical contribution to the state of the art.

    (12)  Accordingly, although a computer-implemented invention belongs to a field of technology, where it does not make a technical contribution to the state of the art, as would be the case, for example, where its specific contribution lacks a technical character, it will lack an inventive step and thus will not be patentable.

    (13)  A defined procedure or sequence of actions when performed in the context of an apparatus such as a computer may make a technical contribution to the state of the art and thereby constitute a patentable invention.

    (13a)  However, the mere implementation of an otherwise unpatentable method on an apparatus such as a computer is not in itself sufficient to warrant a finding that a technical contribution is present. Thus, a computer-implemented business or other method in which the only contribution to the state of the art is non-technical cannot constitute a patentable invention.

    (13b)  Moreover, if the contribution to the state of the art relates solely to unpatentable matter, then there can be no patentable invention irrespective of how that matter is presented in the claims.

    (13c)  Furthermore, an algorithm which is defined without reference to a physical environment is inherently non-technical and cannot therefore constitute a patentable invention.

    (14)  The legal protection of computer-implemented inventions should not necessitate the creation of a separate body of law in place of the rules of national patent law. The rules of national patent law should remain the essential basis for the legal protection of computer-implemented inventions as adapted or added to in certain specific respects as set out in this Directive.

    (15)  This Directive should be limited to laying down certain principles as they apply to the patentability of such inventions, such principles being intended in particular to ensure that inventions which belong to a field of technology and make a technical contribution are susceptible of protection, and conversely to ensure that those inventions which do not make a technical contribution are not so susceptible.

    (16)  The competitive position of European industry in relation to its major trading partners would be improved if the current differences in the legal protection of computer-implemented inventions were eliminated and the legal situation was transparent.

    (17)  This Directive shall be without prejudice to the application of the competition rules, in particular Articles 81 and 82 of the Treaty.

    (18)  Acts permitted under Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular provisions thereof relating to decompilation and interoperability, or the provisions concerning semiconductor topographies or trade marks, shall not be affected through the protection granted by patents for inventions within the scope of this Directive.

    (19)  Since the objectives of the proposed action, namely to harmonise national rules on computer-implemented inventions, cannot be sufficiently achieved by the Member States and can therefore, by reason of the scale or effects of the action, be better achieved at Community level, the Community may adopt measures, in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty. In accordance with the principle of proportionality, as set out in that Article, this Directive does not go beyond what is necessary to achieve those objectives.

  Have adopted this Directive:

Article 1

Scope

  This Directive lays down rules for the patentability of computer-implemented inventions.

Article 2

Definitions

  For the purposes of this Directive the following definitions shall apply:

    (a)  "computer-implemented invention" means any invention the performance of which 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 or computer programs;

    (b)  "technical contribution" means a contribution to the state of the art in a field of technology which is not obvious to a person skilled in the art. The technical contribution shall be assessed by consideration of the difference between the state of the art and the scope of the patent claim considered as a whole, which must comprise technical features, irrespective of whether or not these are accompanied by non-technical features.

Article 3

Computer-implemented inventions as a field of technology

  Deleted

Article 4

Conditions for patentability

  In order to be patentable a computer-implemented invention must be new, involve an inventive step and be susceptible of industrial application. It is a condition for involving an inventive step that a computer-implemented invention makes a technical contribution.

Article 4a

Exclusions from patentability

  A computer-implemented invention shall not be regarded as making a technical contribution merely because it involves the use of a computer, or other apparatus. Accordingly, inventions involving computer programs which implement business, mathematical or other methods, which inventions do not produce any technical effects beyond the normal physical interactions between a program and the computer, network, or other apparatus in which it is run, shall not be patentable.

Article 5

Form of claims

  1.  Member States shall ensure that a computer-implemented invention may be claimed as a product, that is as a programmed computer, a programmed computer network or other programmed apparatus, or as a process carried out by such a computer, computer network or apparatus through the execution of software.

  2.  A claim to a computer program, either on its own or on a carrier, shall not be allowed unless that program would, when loaded and executed in a computer, programmed computer network or other programmable apparatus, put into force a product or process claimed in the same patent application in accordance with paragraph 1.

Article 6

Relationship with Directive 91/250 EC

  The rights conferred by patents granted for inventions within the scope of this Directive shall not affect acts permitted under Directive 91/250/EEC on the legal protection of computer programs by copyright, in particular under the provisions thereof in respect of decompilation and interoperability.

Article 7

Monitoring

  The Commission shall monitor the impact of the protection by patents of computer implemented inventions on innovation and competition, both within Europe and internationally, and on European businesses, including electronic commerce.

Article 8

Report on the effects of the Directive

  The Commission shall report to the European Parliament and the Council by [DATE (three years from the date specified in Article 9(1))] at the latest on

    (a)  the impact of patents for computer-implemented inventions on the factors referred in Article 7;

    (b)  whether the rules governing the determination of the patentability requirements, and more specifically novelty, inventive step and the proper scope of claims, are adequate;

    (c )  whether difficulties have been experienced in respect of Member States where requirements of novelty and inventive step are not examined prior to issuance of a patent, and if so, whether any steps are desirable to address such difficulties; and

    (d)  whether difficulties have been experienced in respect of the relationship between the protection by patents of computer-implemented inventions and the protection by copyright of computer programs as provided for in Directive 91/250/EC.

Article 9

Implementation

  1.  Member States shall bring into force the laws, regulations and administrative provisions necessary to comply with this Directive not later than [DATE (last day of a month)]. They shall forthwith inform the Commission thereof.

  When Member States adopt those provisions, they shall contain a reference to this Directive or shall be accompanied by such a reference on the occasion of their official publication. Member States shall determine how such reference is to be made.

  2.  Member States shall communicate to the Commission the text of the provisions of national law which they adopt in the field covered by this Directive.

Article 10

Entry into force

  This Directive shall enter into force on the twentieth day following that of its publication in the Official Journal of the European Communities.

Article 11

Addresses

  This Directive is addressed to the Member States.

  Done at Brussels,

  For the European Parliament

  The President

  For the Council

  The President


 
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