How the CEC/JURI proposal allowed pure software patents

• Software patents: who plays and who pays (introduction)
• Patents on computer-implemented inventions and pure software patents: what's in a name? (technical discussion)

1. Art 2 (a) JURI:

   "computer-implemented invention" means any invention the performance of which involves the use of a computer, computer network or other programmable apparatus and having one or more features which are realised wholly or partly by means of a computer program or computer programs;

   • Take a (generic) computer and add a new computer program
   • CEC/JURI calls the program executed by a computer a "computer-implemented invention", since
     1. It is not excluded from being an invention by article 52, since in their eyes a program executed by a computer is not a computer program as such (but a "technical process", because a computer is a technical aparatus).
     2. It conforms to the above definition: "an invention the performance of which involves the use of a computer ... and having (all of its) features realised wholly ... by means of ... computer programs"
        
        
2. Art 2 (b) CEC (not amended in JURI):

   "technical contribution" means a contribution to the state of the art in a technical field which is not obvious to a person skilled in the art.

   • Consider the computer program as the technical contribution. "technical" is defined nowhere, "technical field" neither, so in the EPO's interpretation a computer program can perfectly be technical (e.g. if it makes things run faster)
   • The program must be "not obvious", which is quite possible (it means that the program must not be an obvious combination of known techniques). Note: normally, being "not obvious" is a synonym for containing an "inventive step" (as defined in article 56 of the EPC), but CEC/JURI use "inventive step" for something different in Art 4.
     
     
3. Art 4 (phrase 1) JURI:

   "In order to be patentable, a computer-implemented invention must be susceptible of industrial application and new and involve an inventive step."

   • The program executed by the computer must be susceptible of industrial application: check, if you can use it in a way to make money (which is almost always the case)
   • The program executed by the computer must be new: no problem.
   • The program executed by the computer must involve an "inventive step", this is defined in the next phrase.
     
     
4. Art 4 (phrase 2) JURI:

   "In order to involve an inventive step, a computer-implemented invention must make a technical contribution."

   • We need a "technical contribution" to fulfil the "inventive step" condition of the previous paragraph. Again: see next phrase for what this technical contribution condition is.
     
     
5. Art 4 (phrase 3) JURI:

   "The technical contribution shall be assessed by considering the state of the art and the scope of the patent claim considered as a whole, which must comprise technical features, irrespective whether or not such features are accompanied by non-technical features"

   • The computer program still fulfills these conditions for being a "technical contribution", because
     1. Patent claims as a whole = computer+new program
     2. State of the art: the computer belongs to it (it has been invented a long time ago already), but the program doesn't (since it's new)
     3. The claims contain technical features (the computer) and also non-technical features (the program)
     4. The difference between the claims as a whole (computer+program) and the state of the art (computer) = the program
     5. Ergo, the new program can be considered the "technical contribution" (couple this to the fact that "technical contribution" and "invention" are synonyms in patent law, and you just proved that computer programs as such actually are inventions, regardless of what EPC art 52 claims!)
   • But wait, there's still another paragraph that comes to the rescue:
     
     
6. Art 4 (a) JURI:

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

   • We have to produce a technical effect beyond the normal physical interactions between a program and the computer!
   • What is this normal physical interaction? It's described nowhere. As an aside, how on Earth can something non-physical such as a computer program interact physically with anything else at all?
   • We know that using less memory or making things run faster are considered technical effects by the EPO, along with a host of other things such as "processing image data" (see this page under the heading "When is something technical")
   • If we are lucky (which we most likely are), there will be at least one of those things applicable to our program. And if not, we can easily add one.
     
     

So, you just got yourself a patent on a particular piece of software when executed by a computer! So it's not a patent on the program itself, you can for example still print it out and hang it on your wall as decoration without infringing the patent, you just cannot do anything useful with it... Right?

Wrong! There's still:

7. Art 5 (paragraph 2) JURI:

   A claim to a computer program, on its own, on a carrier or as a signal, shall be allowable only if such program would, when loaded or run on a computer, computer network or other programmable apparatus, implement a product or carry out a process patentable under Articles 4 and 4a.

   • If you print out the program, it's on a carrier (paper)
   • If you then would load it in a computer (i.e., scan, perform optical character recognition on it and compile the result) and run it, it would carry out a process that was patentable under article 4 and 4a!

Ok, this is the end. If you're lucky, they won't consider your brain as a carrier (or the neuron-communications as signals), so you can hopefully at least still think about programs which infringe on patents. Don't set your hopes too high though.

Replace computer with mobile phone, washing machine etc in this reasoning to get all variants of devices in which computer programs can be used and patented (since they all have a built-in mini-computer).

See the links at the top of this page for more information.