The Council directive / EPO examination and decisions

(early draft or sketch - v0.01, feel free to take over)

The stated goal of any European Union directive, and their legitimation is to harmonize the common european market, to reduce trade barriers within it, to encourage competition in the european market and lead the Europen Union to a more competitive economy, which is underlined in the Lisbon goals.

All member states of the European Union already have a common foundation for patentabiltiy, which is the European Patent Convention. It lays down that programs for computers are excluded from patentabilty the same way as 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 excluded.

This report finds that the proposal from the Commission and the draft text from the Council working group cannot be
characterised as harmonisation on the basis of the EPC with clear limits of patentabiltiy such as has been set out in
EPC Article 52, but an extension of patentabiltiy towards the US PTO and EPO patenting regime which proponents explain
is what the directive is to prevent.

Electronic Computers which were programmed using computer programs existed since 1958, companies like IBM and Digital Equiment, which has now been bought by HP were already selling computers to companies in the 60es, and 1973, where this exclusion was set into this international treaty, computer programs were already used to calculate trajectories for the moon mission, and commercial comper manufacturing was already so the concept of a computer program was well known and patent courts already had to deal with this question.

In 1997, the EPO in a decision of a Board of Appeal of the EPO (T 1173/97) decided that, although methods for doing business, programs for computers, etc., are as such explicitly excluded from patentability, if there would be a techical character, this exclusion, as laid out in the European Patent Convention would not need to be honored.

In the decision, the Board noted that computer program s are considered to have a technical character, if they cause a technical effect which goes beyond the "normal" physical interactions between program and computer, even if such effect was known already. The conclusion was that methods for doing business and computer programs are not always excluded from patentability.

Examination Guidelines: http://www.european-patent-office.org/legal/gui_lines/e/c_iv_2.htm

Altough rules for playing games, computer programs and business methods are of abstract and intellectual character(not of technical character) and are NOT patentable, the examination guidelines of the EPO state that a for these, such claim has to be examined "as a whole", by looking for a technical process which carries out at least some part of the scheme, which would, in the interpretation of the EPO, change the abstract and intellectual character of rules for playing games, computer programs and business methods to become technical character, which allows for patentability.

The proposal from the Patent working group in the council takes this approach to look at a "claim as a whole" for the technical contribution to find "technical features, irrespective of whether or not these are accompanied by non-technical features", so even non-technical features can be claimed in the patent by this approach.

The EPO also sees programs for compuers as "computer-implemented invention". The examination guidelines define:

 "Programs for computers are a form of "computer-implemented invention"

The definiton which the EPO uses matches Council matches the definiton of computer-implemented invention in Article 1 of the Council's text.

Even tough that examination guidelines of the EPO state that "The basic patentability considerations here are in principle the same as for other subject-matter" and acknowledge that "programs for computers" are included among the items listed in Art. 52(2) which is the paragraph which excludes subject matter for patenting. But the exanimantion guidelines add:

"If the claimed subject-matter has a technical character, it is not excluded from patentability".

They go on to state, that a data-processing operation controlled by a computer program always involves physical effects, e.g. electrical currents, but make clear that such "normal physical effects" are not in themselves sufficient to declare that exclusion of Art 52 (3) where the EPC specifies that the exclusion of the items from Art. 52(2) to to be void.

However, it goes on to say, if such computer program is capable of bringing about a further technical effect which goes "beyond the normal physical interactions between the program and the computer" which is a phrase which is was prominently used in the decision of the Techical Boards of Appeal of the EPO to find a way to open the borders for patentabilty to software inventions. The same phrase is also used in the current political agreement for the directive on computer-implemented inventions. The examination guidelines go one step further and add "irrespective of whether it is claimed by itself or as a record on a carrier", but and equivalent phrase is added in the same directive proposal in Article 5.2.

According to the examination guidelines, such "further technical effect" which "lends technical character to a computer program" can be achived for example, by affecting the security of a process, the management of computer resources required or the rate of data transfer in a communication link.

This is described to consequently establish that a computer program claimed by itself or as a record on a carrier as defined by Article 5.2 of the Council text.

The examination guidelines follow up, that such claims should not contain program listings. Effectively the same is also excluded in the Coucil text which say that "source code, or object code" are not patentable.

The examination guidelines say further that a computer system, even used in the field of business, has the character of a concrete apparatus, and thus is an invention within the meaning of Art. 52(1) (see T 931/95, OJ 10/2001, 441). So this is the justification which the EPO uses to patent  business methods.

In the practice of examining computer-implemented inventions, the guideline suggest that instead of searching for
a technical character, it may be more appropriate for the examiner to proceed directly to the questions of novelty
and inventive step, without considering the question of technical character beforehand.

In turn, to find an inventive step, the examiner is ordered to look for an "objective technical problem" which has been overcome.
The solution of that problem then constitutes the invention's technical contribution to the art, thereby circumventing
the need to examine the requirement of technical character beforehand.

In turn, the guidelines say that the presence of such a technical contribution estabilshes the technical character and claims it patentable. This means that the EPO twists the rules quite a lot.

Presentation of Information

The current EPO examination guidelines state:

"Any representation of information defined solely by the content of the information is not patentable."

They even acknowledge that e.g. traffic signs defined by the warning thereon and processes and apparatuses for presenting information (if defined solely by the information indicated) are not patentable.

But if the presentation of information has "new technical features", there "could be patentable subject-matter in the information carrier" or in the process or apparatus for presenting the information.

The "arrangement or manner of representation", may as well constitute a patentable technical feature, it says then.

Examples which are given include pulse code modulation or a measuring instrument which produces a particular form of graph for representing the measured information and a computer data structure (see T 1194/97, OJ 12/2000, 525)  "defined in terms which inherently comprise the technical features of the program which operates on said data structure (assuming the program itself, in the particular case, to be patentable);"

This means that according to the EPO's guidelines, the order of information in a data structure could be patented if accessing the data structure is claimed.