Patenting of computer-implemented inventions Inventiveness and Protection of Intellectual Property
EU AND NATIONAL LEGAL REGULATIONS IN INDUSTRIAL PROPERTY PROTECTION
Collection of papers presented at the seminar of Council of Patent Attorneys of High Schools.
Cedzyna, Poland, 19–23.09.2005
Volume No 29
Council of Patent Attorneys of High Schools
Polish Patent Office
European Patent Office
Polytechnic School of the Saint Cross Region (Politechnika Świętokrzyska) in Kielce, Poland
Higher Business School in Kielce, Poland
Aurelia Nowicka, Professor, Adam Mickiewicz University in Poznan, Poland
PROTECTION OF SOFTWARE-RELATED INNOVATIONS IN THE PERSPECTIVE OF REJECTION OF THE DIRECTIVE ON THE PATENTABILITY OF COMPUTER-IMPLEMENTED INVENTIONS
I. General remarks
On 6 July 2006 the European Parliament has rejected, almost univocally, a proposal of the directive on the patentability of computer-implemented inventions as has been put in the common position of the European Council of 7 March 2005. The rejection of the proposal, which meant the fiasco of this harmonization initiative, induces us to present its causes and consequences concerning the current status of software-related innovations in the patent law. I will present some information on the legislative process before turning to some more essential considerations.
The European Commission has come up with the Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions, COM (2002) 92, on 20 February 2002 (OJ C 151 E of 25.06.2002, p. 129). The initiative was taken under Art. 95 of the Treaty of the European Community, and the legislative work was conducted under the codecision procedure, which requires the involvement of the European Council and the European Parliament. The first body to take position towards the Commission proposition was the European Social and Economic Committee, which laid down its opinion on September 19th, 2002 (OJ C 61 of 14.03.2003, p. 154). The discussion in the Council took place on November 14 2002, and the first reading in the European Parliament on September 24 2003, which ended with a written position including numerous amendments: changes and new elements (OJ C 77 E of 26 March 2004, p. 229).
The Council has reached a political agreement on 18 May 2004, and on 7 March 2005 it has adopted the aforementioned common position (OJ C 144 E of 14.06.2005, p. 9). The intensive work of Members of the European Parliament (MEPs), with Mr. Rocard as rapporteur, bore the fruit of numerous amendments included in the Draft Recommendation for Second Reading of 29 April 2005 (amendments 1-39) and of 4 May 2005 (amendments 40-256). On 20 June 2005 several proposals suggested by the EP’ Committee on Legal Affairs (later referred to as JURI Committee) followed. At the same time, Plenary Amendments were put forward, under the initiative of several, mostly Polish, MEPs. On 21 June 2005, Mr. Rocard has presented the second final Recommendation for Second Reading including 39 amendments (A6-0207/2005), and the JURI Committee has taken position on this issue on 27 June 2005. In the plenary session of the EP in Strasbourg on 6 July 2005 the Council common position was rejected by an overwhelming majority: 648 out of 680 MEPs have voted against, 14 in favor, and 18 have withdrawn.
The project of the directive was not diffuse. The initial version consisted of 11 articles and the common position of the Council 12 articles, which regulated: Scope - art. 1; Definitions - art. 2, including "computer-implemented invention" and "technical contribution; Conditions for patentability - art. 3; Exclusions from patentability - art. 4; Form of claims - art. 5; Relationship with Directive 91/250/EEC - art. 6; Monitoring - art. 7; Report on the effects of the Directive - art. 8 Impact review - art. 9, and also typical decisions concerning directive transposition into the Members States legal (art. 10), entry into force (art. 11) and addressees (art. 11). The Preamble of the directive initially consisted of 19 points, while its common position version had 23 points.
II. The most controversial issues concerning the status of software-related innovations in the patent law.
The official reason for the Directive was the harmonization of the rules on granting patents for patents on inventions related to computer programs in the European Union. Because there are no EU regulations, and in particular no Community patent, granting of patents In the EU Member States remains outside the Community system. The patent procedure takes place in two ways: 1) conventional, set up by the Convention on granting of the European patents (later referred to as "Munich Convention") by the decision of the European Patent Office; 2) national, on the basis of the decision of national patent offices. This leads to an substantial differentiation of the legal situation as regards the patent protection. An example of this is the refusal of granting patents or the revocation of European patents in certain Member States. Even if the current EU Member States are all signatories of the Munich Convention (Malta excepted), the different interpretation of national law - including the chapters repeating the wording of the Munich Convention - means there is no guarantee of a unified set of conditions as regards patentability and equal treatment of computer-based solutions on the Single Market.
It is worth to underline at this point the distinctness between the community law (e.g. Directives) and the Munich Convention that lies at the ground of the European patent system, but is not an instrument of the community law. The Convention is not binding for the European institutions, and the European Patent Office is not obliged by and does not apply the community law. One should keep in mind the possible incorporation of the Directives into the Munich Convention, on the basis of Administrative Council of the European Patent Organization in the way of completing the Implementing Regulations, which is an integral part of this international agreement. For the first time this possibility has been used concerning the 98/44/EC Directive of 6.07.1998 in the case of legal protection of biotechnological inventions (OJ EC L 213 of 30.07.1998) and consisted on introducing into the Implementing Regulations a new chapter VI: “Biotechnological Inventions” (rules 23b-23b). One could not exclude that an analogical solution might have been adopted in the case of the Directive on computer-implemented inventions once the EU institutions agreed on it.
Among the most controversial and, at the same time, most important issues of the legal-patent status of the computer programs one should mention:
1) Introduction of the demarcation line between the “computer program”, which – as such – is not patentable because it is not an invention in the meaning of the national patent law of the EU Member States (and the Munich Convention) and the “invention”, id est a solution of a technical character, which is patentable under the condition of fulfilling the legal (or Conventional – in the case of European patent claims) requirements of novelty, inventive step and ability to industrial application. The problem comes down to the interpretation of one of the fundamental assumptions of both the conventional and national patent systems, including the Polish one (Art. 28, p. 5 of the of the act on Industrial Property Rights), according to which computer programs are excluded from the definition of the patentable invention; while this exclusion concerns computer programs as such – art. 52 paragraph 2(c) and paragraph 3 of Munich Convention;
2) The question of interoperability linked to the necessity of gaining a real possibility of using the legal authorization for decompilation of the computer program, as foreseen in the intellectual propriety rights (see art. 6 of the directive 91/250/EEC, and art. 75 paragraphs 2.3 and 3 of the Polish Act on the Property Rights and the Connected Rights), In order to avoid the blockade of creating interoperable programs because of the patents on programs under decompilation. This question has a crucial meaning from the point of view of ensuring access and market participation as well as the chances of the competition, especially for small and middle enterprises (SMEs), which are most exposed to the negative outcome of overly liberal practices of granting patents on “software inventions”.
The directive proposal was controversial. This was attested by the differences of interpretation concerning other agreements including several points in the preamble. Moreover, a serious disagreement came to light even in the question of defining the name of the inventions being the subject of the directive. In the first version suggested by the European Commission the inventions were described as “computer-implemented inventions” while the European Parliament sticked to the term of “computer-aided inventions”. The lack of agreement in the matter of defining the subject of the regulation testified of a lack of understanding as for the categories of solutions being the subject of the Directive. As a matter of fact this disagreement showed that the claims of those arguing that the Directive will not change the existing legal provisions were not exact. On the contrary, in the face of the laconic statements of the Munich Convention as well as national acts allowing for the more severe evaluation of patentability of computer based invention, the Directive would lead to the preservation of imperceptible, loose standards. Meaning in fact granting patents on computer programs as such, and having in mind the specific and extremely narrow understanding of this term, which in practice plays a very insignificant role. We can suppose with a fair amount of probability that applications to patent uninstalled computer “programs on their own”, in the form of a text on the carrier, do not arrive to patent offices. Although the name of this group of inventions in itself was not essential, because the patentability depends on the substantial content as well as rules to apply criterion's of patentability, the adoption of a certain definition might have been interpreted as a signal encouraging or preventing further watering down of the patentability examination. From the point of view of countries with a weaker base in computer applications field further liberalization is not desired, the wording “computer-implemented inventions” was put aside which – inspired by practice of the European Patent Office – could have been associated with the tendency to diminish the differences between computer program and invention. By the way, it is worth underlining that neither of the proposed definitions is precise. It is not the computer that aids or implements the invention, but the computer program, thanks to which the computer works and executes the programmed functions. Therefore it was considered necessary to adopt the wording of either “computer – aided inventions” or “computer – controlled inventions” while keeping in mind the fact that in the past these solutions were described as “software-related inventions”.