For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 11 December 2006

NAME THAT DUCK! THE BIDDING RISES; SILENT ON SOFTWARE PATENTS


Name that duck! The bidding rises ...

Readers will recall that, at last month's Stephen Stewart Memorial Lecture, Isabel Davies bought a rubber duck, autographed by Andrew Gowers. In order to raise money for that worthy organisation and registered charity the Intellectual Property Institute, Isabel kindly entrusted that duck to the IPKat with instructions to auction the right to name it.

As of this very moment the bidding now stands at £105. Surely the right to name this charming, innominate duck is worth more than that! Come on, send the IPKat your bids by email to theipkat@yahoo.co.uk. Bidding closes on Friday 15 December at 2pm GMT.


Silent on software patents

Cristian Miceli (Lawyers Against Software Patents), noting that the IPKat's note on the Gowers Review made no mention of its statement on software patents, has emailed to draw the Kat's attention to his thoughts on the report as far as software patents are concerned.

The IPKat's note, inevitably, was always going to be superficial and highly selective, given that there was going to be an avalanche of comment on it and he didn't see that there was much to be gained from deep, analytical focus on this technical and controversial issue. Note for readers: Gowers was set the task of reviewing the entirety of intellectual property and publishing its report in less than a year, reviewing nearly 500 submissions in the process and coming up with nearly 60 proposals. Whatever it was going to say about software patents was always going to be a cop-out under those circumstances.

Merpel agrees, reminding readers that the real issue is not software patents as such, but the intricate web of patent, copyright, confidentiality, DRM, encryption, distribution, market power and consumer conservatism that can serve to inhibit or blot out effective competition in in software innovation.

16 comments:

David said...

I would argue that the Gowers review itself is rather superficial and highly selective on software patents. There is little mention of the difficulties in actually defining what the boundaries for excluded subject matter are supposed to be, and only a trite conclusion that "The Review supports the current position" (page 76). What current position? As far as I can see, the current position is one of uncertainty, at both the UK and EPO level. This is clearly borne out by Jacob LJ's comments in the recent Aerotel/Macrossan case. The Gowers Review simply doesn't help at all in the ongoing debate over software and business method patents.

Gerontius said...

I very much agree with Merpel that the Gower's review was never intended to provide detailed comments on software patentability. Any claims of foul-play on that front are misguided.

The current position in the UK and Europe is also quite clear, contrary to what Woodpecker says, it is just that the law is difficult to apply so that determining cases on the boundary is difficult. The principle at work can be simply stated as: anything that makes a non-excluded (and/or technical) contribution is an invention that is susceptible of patent protection. Because of the difficulties in applying this test, the EPO and the UKPO express it and work it out in quite different ways, but the underlying principle set out above is the same. Any further refinement of this principle is a matter for the courts, and could not and should not have been a matter for the Gowers Review.

Applying this principle to software, we come up with the trite statement that a computer program is not patentable for the mere fact that it is a computer program, but may be patentable as a result of the process the computer program performs (eg controlling a robot arm). If that process is itself excluded, (and/or non-technical) or is not itself the "contribution" then the alleged invention as a whole is excluded (or non-technical). Again, the law is clear on this point but, as the Court of Appeal has repeatedly acknowledged over the last ten years, it is still difficult to apply.

David said...

If the UK and EPO position is "quite clear", then why is Jacob LJ suggesting a number of questions to the Enlarged Board of Appeal? Does this not suggest that there is some degree of uncertainty at the EPO level at least?

What does "technical" actually mean? And the answer is certainly not that it means the same as "non-excluded", because the EPO does not take this approach. Look at the way the EPO approach the computer program exceptions as opposed to business methods. Computer program advances are in general viewed as being "technical", whereas business method advances are generally not. This is regardless of the fact that both are excluded as such. The exclusions are applied for political reasons and not from the strict wording of the Articles.

By the way, I am not in any way crying foul play. I would not expect the Gowers Review to be able to come to any reasoned conclusion on the boundaries of patentability, since many people having much better qualifications than being a newspaper editor have failed before. However, it is not necessarily correct to say that any further refinement is a matter for the courts, as evidenced by the (aborted) attempt at an EC Directive on the subject. The Review could have said something about the matter, but effectively chose not to.

Cristian said...

Dear Gerontius

I understand your position but I don't agree agree with your interpretation of the current position on Computer Programs (although I completely respect your right to your opinion, adding though that your interpretation also happens to be more beneficial to your clients if it were true). You state:

"Applying this principle to software, we come up with the trite statement that a computer program is not patentable for the mere fact that it is a computer program, but may be patentable as a result of the process the computer program performs (eg controlling a robot arm). If that process is itself excluded, (and/or non-technical) or is not itself the "contribution" then the alleged invention as a whole is excluded (or non-technical). Again, the law is clear on this point but, as the Court of Appeal has repeatedly acknowledged over the last ten years, it is still difficult to apply."

The fact remains that the position on hybrid inventions (an invention which includes patentable subject matter and excluded subject matter) is unclear. It was this very lack of clarity which led to the failed Software Patents directive in July 2005. The inability to agree a common position led to the directive being rejected. In the UK, the latest Court of Appeal decision in Macrossan contains a number of statements about the negative effects of computer program patents and that the approach of the EPO (I can give you quotes), in certain decisions, seems to be at odds with a purposive approach to interpreting the provisions on excluded subject matter in the EPC. However, what is clear from both the Court of Appeal decision and the much respected High Court decision of CFPH (which was noted by the Court of Appeal and which has long been endorsed by the UK Patent Office), is that in hybrid inventions involving computer programs, it is the claimed physical process /artefact (and not the computer program as such) that is in theory patentable provided the process or artefact satisfies the requirements for patentability. The best expression of this subtle distinction that I have read to date is that of Prescott QC in paragraph 103 of the CFPH decision and his 'little man test'. Unfortunately the Court of Appeal did not feel the need to deal with this issue expressly (other than referring and citing recent case law) given that the case before them did not involve a hybrid invention. The computer program is merely a tool which results in the movement of the robot arm. It is still a computer program and should not be patentable. What could in theory be patentable, is the industrial process achieved by the robot under instruction of the computer program, but to the exclusion of the computer program. With the little man test, Prescott QC was trying to set out a clear statement of how hybrid inventions can be dealt with whilst still adopting a purposive approach to the EPC (something which the EPO appears unable or unwilling to achieve) and that the presence of the computer program per se did not prevent patentability of the claimed process or artefact (but he never mentioned the idea of the 'claimed computer program' in discussing hybrid inventions because to do so would have been to allow the patentability of excluded subject matter by joining it together with patentable subject matter).

Best regards

Cristian

LASP

Anonymous said...

Cristian,

I think you are mistaken. A computer program is not "excluded subject matter" as you state in your perambulation. Rather programs for computers "shall not be regarded as inventions". There is a clear distinction between Articles 52 and 53 EPC, the latter reciting what could be termed "excluded subject matter".

David said...

Not just mistaken, Christian, but (with respect to your thoughtful but nonetheless misguided arguments) completely wrong. Claims to computer programs themselves are indeed allowable in Europe, provided the computer program has a "further technical effect". How to define what this means is the difficult thing. However, the day is long gone when only "physical" things were patentable. This reasoning is also followed at the UKPO, as exemplified in recent hearings. I can give references if you like. ;-)

Going back to patenting only physical things is simply not going to happen.

Cristian said...

Thanks for your comments.

Firstly, what does Article 52 deal with, 'programs for computers' or 'computer programs'..., well I am happy to rely on the wisdom of the English Court of Appeal here, which when referring to Article 52 in the Macrossan case (see paragraph 9 for example), talks of 'computer programs' (as does Prescott QC in CFPH). Later on in paragraph 16, the Court refers to "[s]ome of the Art.52(2) excluded categories" (emphasis added).

In paragraph 19, the Court goes on to say (emphasis added): "it by no means follows that because of pressure from applicants [read also patent attorneys :-)], the grant of patents for excluded categories should be allowed or that the excluded categories (particularly business methods and computer programs)

Furthermore, in Article 52(3) EPC, it uses the phrase: 'exclude patentability of the subject-matter'. Computer programs are not considered patentable inventions "to the extent to which a European patent application or European patent relates to such subject-matter or activities as such." Computer programs are prima facie excluded subject matter. The issue that has caused problems is what is meant by 'to the extent' and 'as such'.

Prescott QC in CFPH stated at paragraph 25:

“Article 52(3) indicates that a subject-matter is excluded ‘only to the extent’ that a patent relates to it ‘as such’…. In the past it has led some people to think that you should be able to patent any new, non-obvious idea, so long as what is claimed as the invention does not consist only of excluded subject-matter. According to that reasoning you could patent an excluded item e.g. a computer program by the formal device of claiming some physical artefact (e.g. “A magnetic disk in which my program is stored”, or “A computer when operating under the instructions of my program”). And indeed if it were just a question of interpreting Article 52(3) as if it were an Act of Parliament, they might have been right. However, it is not an Act of Parliament, and they were not right

Note he talks of patenting 'an excluded item'...and also he refers to 'computer program'. He also importantly explains how people have tried to attach a computer program to a 'physical' artefact in order to achieve patentability (more of this later).

The 'further technical effect' is a 'pure' invention of the European Patent Office - it has no legitimacy based on the wording of the EPC. Prescott QC and, to a certain extent the Court of Appeal in Macrossan, made it clear that the expression 'technology' or 'technical effects' should not be used in abstract to avoid giving a purposive effect to the policy considerations behind the exclusions of what is a patentable invention contained in Article 52 EPC:

"Now let me outline the practice of the European Patent Office. They look at the applicant’s claim, and ask themselves: does it have any “technical features”? If there are no “technical features” at all they reject the application, for not being an ‘invention’. But they consider it is an invention if there is any “technical feature” at all. They take it very far. Even paper, or ink, can count as a technical feature"....(paragraph 45 of CFPH)

and he goes on to say: "it will often be possible to take a short cut by asking “Is this a new and non-obvious advance in technology?” That is because there can often be universal agreement about what is ‘technology’….But sometimes it will not be possible without running the risk of error...If there is any doubt it will then be necessary to have recourse to the terms of Article 52 of the Convention" (paragraph 97 of CFPH).

It is the terms of the convention, which should be the yardstick by which the patentability of an invention is judged, not easily manipulated and undefined expressions like 'technical effects' which can be distorted by an institution which is making money, hand over fist, by granting dubious patents which risk damaging the knowledge economy.

In paragraph 31 of the Court of Appeal judgment, the Court comments: "we think the framers of the EPC really meant to exclude computer programs in a practical and operable form. They meant to exclude real computer programs, not just an abstract series of instructions" and the court goes on to examine the recent decision of the EPO BA in Microsoft/Data transfer with expanded clipboard formats (2006) T 0424/03 concluding that the decision is:

"inconsistent with Gale in this Court and earlier Board decisions such as Vicom. It would seem to open the way in practice to the patentability in principle of any computer program. The reasoning takes a narrow view of what is meant by “computer program” – it is just the abstract set of instructions, not a physical artefact which not only embodies the instructions but also actually causes the instructions to be implemented – such as the memory in a computer on which the program is stored."

As we know from above, the Court of Appeal believes that, if the purpose of the EPC is to be respected, this narrow interpretation is incorrect. In your comments you say that claims to 'computer programs themselves are indeed allowable in Europe", you might be right but this does not mean that this is as a result of an appropriate application of the EPC. Yes, the EPO may be granting such patents, but the Court of Appeal makes its views, if not with great English conservatism in expressing these, quite clear as to what it thinks of the approach taken by the EPC to defining computer programs. You also cite as authority the decisions of the UKPO. With the greatest respect, the UKPO (as even noted in the Gowers Review of Intellectual Property) is an administrative body which has a dual function, as with the EPO, which creates a potential for conflict of interest. I do not accept the UKPO's views as being where the buck stops on interpretation of the EPC. I also doubt, as other legal commentators do (including Prescott) about the appropriateness of the EPO (and similar bodies) determining what should and should not be patentable and having any roll in policy. As Prescott QC notes, it is our national Parliament which ultimately has responsibility for determining what should and should not be patentable ("[t]he EPO is not equipped with a staff of expert economists who are competent to decide if the patenting of business methods, or computer programs, would be good for our country and even if it was it would still be for our Parliament to decide" - per paragraph 56 of CFPH).

I would also add that the courts also get it wrong and critical legal theory (which is what interests me) is all about questioning the approach of our courts and Parliament. So, ultimately I am entitled to my view of what is the appropriate interpretation of the EPC. I believe my views, as expressed in more detail in past articles and postings are in line with the purpose behind the EPC and also what is in the public interest because, as many of those who blog on these pages forget (but which luckily both the High Court and Court of Appeal of England and Wales has not forgotten), patents are not granted to make patent attorneys or lawyers money, or because they are for the good of corporate interests but instead solely on the basis that they are in the 'public' (not corporate) interest and my view, and those of many others, is that patents for computer programs are not in the public interest. However, I am very much of the view that the presence of a computer program which is used in an industrial process or artefact should not prejudice the patentability of the claimed physical process or artefact (without foreclosing the computer program, in the language of Prescott QC).

Now I use the word 'physical' not because I necessarily believe that only physical things should be patentable, but instead in the context of discussing the patentability of computer programs and in particular, as Prescott noted throughout his judgment, when discussing hybrid inventions. In the context of hybrid inventions involving (or using as some put it) a computer program, the only thing which should be patentable (if keeping to the purpose of the EPC) is the claimed physical artefact or process (see paragraph 103 and the wider discussion in CFPH) - the necessity for the 'physical' artefact or process is not simply my position but is also the language used by Prescott QC. I don't expect you to agree, clearly you have a very different view to me. We are each entitled to our views (last time I checked with the EPO that is..)

Regards

Cristian

LASP
www.lasporg.info

Anonymous said...

"Claims to computer programs themselves are indeed allowable in Europe, provided the computer program has a "further technical effect"." - Woodpecker

"If the contribution to the known art resides solely in a computer program then the subject matter is not patentable in whatever manner it may be presented in the claims." - EPO guidelines of 1978

Of course the law can be bent to mean whatever Woodpecker would like it to mean. Maybe lawbending is necessary sometimes. When old principles cannot deliver, you bend until you have to rewrite. The problem woodpecker has now is not to convince the audience he can bend, but that bending is needed.

Software copyright protection is a success (read Microsoft). Copyleft protection is an even greater success (read Linux). Who the hell needs software patents? Maybe Woodpecker himself?

David said...

I am not arguing for or against patents for computer programs or for methods of doing business. I am stating the fact that claims for computer programs (e.g. "A computer program product, comprising a computer readable medium having thereon computer program code means adapted, when said program is loaded onto a computer, to make the computer execute the procedure of any one of claims [x] to [y]") are allowable in principle, i.e. have and continue to be granted. Whether this is contrary to the meaning of the EPC is where the "critical legal theory" comes in.

By the way, the Guidelines are not in any way legally binding, just as is the case for the Manual of Patent Practice in the UK. It is the EPC itself and the EPO Boards of Appeal decisions that matter (for the EPO). The Guidelines for 1978 have been superceded by many Board of Appeal decisions, and should not therefore be relied on.

Anonymous said...

Arguing about how to interpret the EPC is useless. We know that it's possible to bend the text of the law and make it mean pretty much anything we want. "Technical effect" can mean making a pixel go from white to black. "As such" can mean anything we like. A good lawyer can make white mean black. I'm not impressed.

The real questions are not how far we can bend the law, but whether this is a good thing or not. The presumption of value on patents has been so strong that the patent industry justifies its (to many, highly unethical) machinations on the grounds that "patents are good for the economy, so by expanding patentability, we're doing everyone a favour". Some may really believe this, but what is really going on is much more like a classic mafia protection racket, or an arms race. Most firms buy software patents only because their competitors do.

I've argued that the expansion of the patent system is self-destructive and unsustainable. The feeling in the US is that patents are "too much, too late, too long" for the software industry. The US economy is collapsing, and its patent system is not saving it: productivity is falling, competitiveness is falling, the dollar is falling. Meanwhile Europe is doing rather well. Perhaps there is actually a link between IPR and economics, but not quite the one we're always told about?

Basic ethical principles do matter. The current patent system is a casino game that favours the rich and powerful over the poor and weak. In general (not just software), patents are only useful if you have deep pockets. A patent is an unequitable tool because in the hands of a poor firm, it's worth a lot less than in the hands of a rich one. What other form of property would be acceptable on this basis? Would you accept such discrimination in any other market? The inequities of the patent system are so offensive that the anger of civil societies like the FFII is not just obvious, it's surprisingly restrained. Create systems that go against basic ethical principles, and the wrath of the citizenry will descend upon your heads.

So, for software, the question is "does the current patent system work for software", and the answer is "no" on all levels except a few. A patent issued 4-5 years after application (in an industry where product life-cycles are 12-18 months), that excludes all independent invention (in an industry that is based on collaborative work), that is expensive to aquire and very expensive to defend (in an industry that depends on microlabour and commoditization), and that lasts for almost two decades (in an industry that totally reinvents itself every decade) is about as bad a form of protection as it's possible to design for software. The only benefits are that holding patents pleases investors, and scares competitors. How can any sane person defend this tradeoff except from narrow self-interest if they are the lucky ones that don't actually produce software products?

There are probably ways to construct an ethical patent system. It is even plausible that an ethical patent system could be very popular and useful in the software industry. However, given today's patent system, it's accurate to say that patenting software is unethical, unsustainable, and deservedly, very unpopular.

Anonymous said...

I'll leave the discussion about how to interpret the EPC to the lawyers. We know that it's possible to bend the text of the law and make it mean pretty much anything we want. "Technical effect" can mean making a pixel go from white to black. "As such" can mean anything we like. A good lawyer can make white mean black.

The real questions are not how far we can bend the law, but whether this is a good thing or not. The presumption of value on patents has been so strong that the patent industry justifies its (to many, highly unethical) machinations on the grounds that "patents are good for the economy, so by expanding patentability, we're doing everyone a favour". Some may really believe this, but what is really going on is much more like a classic mafia protection racket, or an arms race. Most firms buy software patents only because their competitors do.

I've argued that the expansion of the patent system is self-destructive and unsustainable. The feeling in the US is that patents are "too much, too late, too long" for the software industry. The US economy is collapsing, and its patent system is not saving it: productivity is falling, competitiveness is falling, the dollar is falling. Meanwhile Europe is doing rather well. Perhaps there is actually a link between IPR and economics, but not quite the one we're always told about?

Basic ethical principles do matter. The current patent system is a casino game that favours the rich and powerful over the poor and weak. In general (not just software), patents are only useful if you have deep pockets. A patent is an unequitable tool because in the hands of a poor firm, it's worth a lot less than in the hands of a rich one. What other form of property would be acceptable on this basis? Would you accept such discrimination in any other market? The inequities of the patent system are so offensive that the anger of civil societies like the FFII is not just obvious, it's surprisingly restrained. Create systems that go against basic ethical principles, and the wrath of the citizenry will descend upon your heads.

So, for software, the question is "does the current patent system work for software", and the answer is "no" on all levels except a few. A patent issued 4-5 years after application (in an industry where product life-cycles are 12-18 months), that excludes all independent invention (in an industry that is based on collaborative work), that is expensive to aquire and very expensive to defend (in an industry that depends on microlabour and commoditization), and that lasts for almost two decades (in an industry that totally reinvents itself every decade) is about as bad a form of protection as it's possible to design for software. The only benefits are that holding patents pleases investors, and scares competitors. How can any sane person defend this tradeoff except from narrow self-interest if they are the lucky ones that don't actually produce software products?

There are probably ways to construct an ethical patent system. It is even plausible that an ethical patent system could be very popular and useful in the software industry. However, given today's patent system, it's accurate to say that patenting software is unethical, unsustainable, and deservedly, very unpopular.

David said...

Very interesting points, Pieter. As I said above, the problem is largely a political one, and not necessarily about correct interpretation of the EPC. The current practice of the EPO is illogical when it comes to deciding the boundary of what is and is not patentable (and I am not saying they are right or wrong, just that they are inconsistent), and this appears to stem from political views on what should be patentable. Any change therefore probably requires political movement, and probably at a European level.

By the way, in the longer comments above I detect a slight bias against i) software patents; and ii) lawyers (and patent lawyers in particular). The first is fair enough, as the commentors seem to be part of the lobbying group against software patents, and this is acknowledged as such(at least by Christian). The second, however, is not very helpful. Lawyers, and attorneys in particular, exist to represent their clients and use the existing law to argue their client's case. Blaming them for any of the ills of the system is simply wrong, and is akin to shooting the messenger for bad news. Other gripes about lawyers seem to be purely about jealousy (i.e. "they" earn more than me), which is a bit childish.

In the immediately preceding comment, for "ethical", read "socialist", and for "black" read "white" (and vice versa). It makes more sense that way.

Anonymous said...

Woodpecker, with respect to a perceived bias against patent lawyers, I must say I feel it is justified. For context, I am the Chief Scientist of a software company that has raised over US$10M over the past two years. Our investors were keen for us to talk to patent lawyers, and those patent lawyers did not simply "represent their clients", they were clear advocates for spending a lot of our money on acquiring software patents, and spent no time at all explaining why other forms of IP protection (such as trade secrets, for which they get paid nothing) should be considered. Nor did they explain facts such as that it would take several years for a patent to be granted, and by that time we would have long ago either succeeded or failed as a company. Nor did they explain that acquiring patents forced us to disclose what was being patented, which could have been a big help to our competitors (not because they might copy it, but because it tells them the direction in which we are going).

Software patents are weapons, and in my experience, IP lawyers are weapons dealers. They are not providing impartial advice, they argue strongly in favor of acquiring as many patents as you can afford. This isn't a bias, this is personal experience.

David said...

If an attorney is not representing his client's best interests, then the client should either tell him so, or look for another attorney. As with all walks of life, there are good examples and bad examples. From the sound of it, you were not represented properly. This does not sound like a good example of best practice, from what you say. A patent attorney should have enough general IP knowledge and commercial sense to know when a patent is not required, and should not try to push for one when it is not needed.

Having said that, if the client does not know why he is trying to get a patent, and what the alternatives are, he should question himself before blaming the attorney.

All patents are weapons, and not just software patents. Some are more dangerous than others, and their danger largely depends on whose hands they are in. The weapons dealers are not the attorneys though; that would be the patent office, whose job it is to grant them.

Anonymous said...

woodpecker, it is clearly true that in an ideal world, attorneys would not encourage their clients to get software patents unless it were actually in their best interests to do so. Of course, we don't live in that world, and that is why there is a certain antipathy towards patent lawyers among those that oppose software patents.

To your point about the client not knowing why he would want to get a patent, and what the alternatives are, you should know that most people without a legal background really don't know much about IP law, and that is why they hire IP lawyers. If you are saying that it is their fault for not knowing that their IP lawyer was giving them bad advice, then what is the point in hiring the lawyer in the first place?

I do stand by my analogy of attorneys as weapons dealers, the patent office may manufacture the weapons, but often its the IP lawyer that sells them (in the real world).

David said...

In my defence of patent attorneys, I would suggest that any company serious about securing their intellectual property should employ someone who at least knows the ropes, i.e. has some kind of training or experience in IP. Drafting and prosecuting patent (or even trade mark) applications is quite an art in itself, for which properly qualified people are needed, but making strategic decisions about what to do (rather than how to do it) is often better made within the company that is going to actually own the IP.

You don't, by the way, need a legal background to get sufficient knowledge about IP to make these decisions. An MSc in IP (such as the one run at Queen Mary University of London) and a degree of common sense should be good enough for most purposes. The details can be left to the experts.

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