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.

Friday, 24 October 2008

EPO Enlarged Board Referral on Software Patents

The IPKat has just learned that a referral has been made to the Enlarged Board under Article 112(1)(b) by the President of the EPO Alison Brimelow (right) on question of software patents. The full text of the referral can be found here (pdf document), and the EPO announcement here. Thanks are due to a very eminent subscriber for pointing this out.


As a background to the questions, Ms Brimelow states:
"Even in the 1960s, as the founding fathers of the European Patent Office drafted a new European patent law, it was clear that the patentability of computer programs was a complex issue. Legislative attempts to change or clarify the law in this field have met with more controversy than success, although Article 52 EPC was amended to state that inventions ‘in all fields of technology’ are patentable, thus making an implicit requirement explicit.

As the EPC was drafted, the feeling was that it was better not to define the exclusion precisely in law, but rather that the matter should be left in the hands of the EPO and the national courts. This flexibility is important as technology develops and new technologies emerge. Nevertheless, to quote a working group in 1972: “it was stressed that a matter as important as computer programmes [sic] should not be left in a state of prolonged uncertainty pending legal developments”. Diverging decisions of the boards of appeal have indeed created uncertainty, and answers to the questions arising from these decisions are necessary to enable the further, harmonious development of case law in this field.

Currently there are concerns, also expressed by national courts and the public, that some decisions of the boards of appeal have given too restrictive an interpretation of the breadth of the exclusion. It is clear that the European Patent Office should have the leading role in harmonising the practice of patent offices within Europe.
The four questions have been chosen to look at four different aspects of patentability in this field. Firstly the relevance of the category of the claim is questioned. The next three questions concern themselves with where the line should be drawn between those aspects excluded from patentability and those contributing to the technical character of claimed subject-matter: the second question concerns the claim as a whole; the third, individual features of a claim; the fourth, relevant for defining the skills of the (technically) skilled person, concerns the activity (programming) which underlies the resulting product (computer program).

It is hoped that the referral of these questions to the Enlarged Board of Appeal will lead to more clarity concerning the limits of patentability in this field, facilitating the application of the law by examiners and enabling both applicants and the wider public to understand the law regarding the patentability of computer programs according to the EPC.
"
The questions are as follows:
1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.(a) Does the activity of programming a computer necessarily involve technical considerations?

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?
As the extensive background to each of the questions details, each of them is deliberately aimed at aspects of the sometimes contradictory nature of the Technical Boards of Appeal decisions that have been made on the subject over the last couple of decades, from Vicom to Duns Licensing, via IBM, Hitachi and Microsoft, among others.

The closing summary gets to the real meat of the issue:
"From the historical documents it appears that the authors of the EPC agreed that a computer program could only be patentable if it had technical character. This view is supported by the different comments given by delegates referring to the amendment of paragraph 1. However, this technical character, necessary to avoid the exclusion laid down in Article 52(2) EPC, was not defined.

Furthermore, the wording of Article 52(2) EPC provides no indication as to whether the exclusion of certain items is based on the fact that the items mentioned lack the necessary technical character or whether the exclusion is based on broader social or political considerations. The possibility that some excluded items are indeed technical is left open by the phrase “shall not be regarded as inventions”. Consequently, from the wording of Article 52(2) EPC, no conclusion can be drawn concerning the question of whether a computer program is technical or not.

In the absence of guidance from the law and its preparatory documents, and in view of the existence of divergences of opinion regarding how the computer program exclusion should be applied, it is considered appropriate at this stage to refer the questions set out in the previous section to the Enlarged Board of Appeal for its opinion."
The IPKat must admit that he is quite surpised, not to say a bit shocked, at the appearance of this referral. He was gradually coming round to believing that the questions had being largely settled (heavily fudged though they may be), after the kerfuffle around Aerotel and Duns Licensing, followed by the dampening down of Symbian (IPKat commentary here). He had the impression that national courts, the UK in particular, were eventually beginning to be persuaded to step in line with the EPO lead, even though the EPO stance had 'evolved' somewhat over the years as a result of the demands of patent applicants. As regular readers will know, this Kat has been banging on for a while now about the sometimes strange reasoning that the EPO has been using over whether to exclude or not to exclude, particularly when it comes to what exactly is meant by 'technical'. Humpty Dumpty has, of course, been mentioned in this context before.

The IPKat is very keen to see these questions being settled properly at the EPO level, which should hopefully provide applicants with some degree of predictability as to what they might and might not be able to get away with in future. As many people from either side of the software patents debate often fail to realise, what patent practitioners actually want in the main, rather than more patents for bad inventions, is some degree of certainty so they can provide a decent service for their clients. Their jobs are not made any easier, and their clients' pockets are certainly made much lighter, by the swinging pendulum of the UK approach and the uncertain shifting reasoning of the EPO approach. Failing certainty, it would be nice just to have slightly more rigidly defined areas of doubt and uncertainty. At the moment we don't have even that.

The outcome of the referral process, resulting in a decision by the enlarged board on these questions, is unlikely to be known for some time, possibly a year or two given past behaviour. The IPKat wonders whether this will mean that all those applications containing computer program claims, or even those merely referring claiming 'computer implemented inventions', will now have to be put on hold. We (patent attorneys, that is) certainly hope not, but the IPKat thinks that this might be an inevitable effect of trying to sort out the issue properly (but, he suspects, not once and for all).

For more on this referral, see the IPKat's further comments here.

38 comments:

Anonymous said...

The Kat shouldn't be too shocked, given that a referral was already hinted at in February.

Legally speaking, Aerotel and Symbian cannot have too much to do with the decision to refer or not. I suppose these judgements can be used to support the "fundamental importance" of this area of patent law, but I believe its importance is already self-evident anyway. (Plus I don't see the EBA refusing to admit a referral for lack of importance.)

I haven't studied the referral in sufficient detail yet, but I fear that some or all of the "divergences" can be interpreted away, leading to inadmissibility. In that case we will learn how to read the various EPO-decisions in a legally consistent manner, but not whether the EBA actually agrees with them.

Anonymous said...

Could it be that even just the text of the Brimelow referral will be one more document to help the CAFC come to a rational view in its struggles with 101 issues? Bilski etc. Could it even be that there's some co-ordination going on here, since early September when Alison was in Boston MA, to launch with the President's referral a concerted US/European attack on the legal uncertainty of patentability at the envelope margin, in computer-implemented inventions?

Reinier Bakels said...

Consistency is important, but underneath there is a much bigger problem: what knowledge is patent-eligible? What are fundamentally the criteria for "inherent patentability", as Justine Pila called it? The technology criterion is indeed "merely a restatement of the problem in more imprecise language" (UK CFPH decision).
The answer to formalistic problems is not more formalism, but to make a connection with the social (economic) needs and problems of software (and similar) patents.
Unfortunately, both the EPO and anti-swpat activists focus all the time on strange, utterly complicated, formalistic rules of a kind unheard in other fields of law.
I believe the basic principles and philosophy of patent law have to be revisited.

Reinier Bakels said...

Re the above reference to Bilski: there is a striking resemblance, and there are major differences.

A difference is that In re Bilski, there is an acknowledged policy problem: financial business method patents are used to virtually extort banks and insurance companies (see pertinent Amicus Curieae Briefs). As such companies depend on trust, they usually do not challenge infringement claims, but settle, often for hundreds of million dollars. Well, we all know about protests against swpats, but these are not referenced by Brimelow.

A similarity is that in both cases, the actual discussion is limited to legalistic formalisms totally detached from the policy issues (e.g. the question whether particular patents are useful. Perhaps legal practitioners love that - but imho the policy issues ought to be leading.

A difference again is that the EPO focusses on the "technical contribution" requirement, developed in case law from art. 52 EPC, and the exclusion of "software as such" in particular. The Americans focus on the physical transformation requirement, developed in case law (e.g. 1877 Cochrane v. Deener, 1981 Diamond v. Diehr). It is a similar kind of word play, but a different one.

A difference again is that there is an increasing awareness that the US State Street decision, made by a lower court in 1998, that introduced large scale business method and software patenting, is not compliant with the supreme court precedent: "practical utility" is not sufficient to qualify as patentable subject-matter: the SCOTUS previously denied the patentability of inventions that did have "practical utility". Otoh, I bet that the EPO is seeking only confirmation for the technical contribution approach it developed around the last turn of the century.

Big question: shouldn't really the legislator interfere if - on both sides of the Atlantic - patent offices and courts are running in circles, for several decades now?

The trade in knowledge enabled by patents is essentially a trade in derivatives. Pessimists argue that the "patent bubble" may be the next bubble to burst, and cause another crisis. The similarity with the present financial crisis is actually striking. Only insiders understand these derivatives - both in finance and in patents. And it distracts from the real business. Economists know that there is a "patent paradox" in many fields: while the patenting propensity increases, R&D expenditure goes down. Competition is apparently moved from the marketplace to the courtroom.

Is Alison Brimelow bright enough not to become another Alan Greenspan? The EPO is a stronghold of patent-believers. The correction must come from elsewhere. From politics?

Have a nice weekend!

Paul Jakma said...

what patent practitioners actually want in the main, rather than more patents for bad inventions, is some degree of certainty so they can provide a decent service for their clients.

Yet patent practitioners do have at least a modicum of vested interest in the extent of the scope of patents, surely?

Also, could those patent practitioners who hold a dismissive attitude towards EU-level anti-software-patent lobbyists (as seen in comments here in the past) perhaps clarify exactly how they expect the interests of practitioners of software to be represented in this debate? Such software practitioners who are against software patenting are, obviously, far less likely to come into contact with patent practitioners..

Anonymous said...

Reinier:
"Well, we all know about protests against swpats, but these are not referenced by Brimelow."
Not by Brimelow, but I'm sure we can expect quite a few amicus curiae briefs being filed in G 3/08 by (among others) anti-swpat groups.

"imho the policy issues ought to be leading."
The EBA and the CAFC are courts, not political bodies. Policy issues might play a role in the background, but cannot be leading.

"Unfortunately, both the EPO and anti-swpat activists focus all the time on strange, utterly complicated, formalistic rules of a kind unheard in other fields of law."
In the end, the decision to grant or refuse must be based on the law, not on whether society would benefit from the patent. Other areas of law need their own formalism to work. The general concept of "(un)fairness" often plays a role in the background but relies on "formalistic" legal rules for its implementation.

Anonymous said...

Have to disagree with Mr Bakels. I think the referral is all about the real world of those writing claims, and those examining them. I suspect that Mr Bakels doesn't do either. In the real world, the legislator in Europe has already spoken, but drafters and Examiners need an unambiguous bright line to define the envelope of patentability. That's the practical need, and that's the hard bit, and that's the beauty of the timing of the referral. Wait till the "divergence" can be spotlighted, set the public policy background, and ask the EBA for a workable test. Come on EBA, you have a reputation to maintain. The EPO created a brilliantly simple test for "obvious". Now is the time to set out an equally elegant and simple test for "101" patentability for computer program inventions. But no airy fairy Bakels waffle please. Let's have a test that works fast, simply and fairly, on all of the thousands of claims streaming in to the EPO, every working day of the week. Let's show the rest of the world how to do it, as the EPO already has with obviousness (that used to be devilish difficult, but isn't any more, thanks to the pure genius of the Problem & Solution Approach)

plh said...

“anti-swpat activists focus all the time on strange, utterly complicated, formalistic rules of a kind unheard in other fields of law.”

They most certainly do not, Mr Bakels. Perhaps the naïve ramblings on some obscure programmers' blogs have given you that impression, but if the (real) anti-swpat activists hadn't always emphasised the “connection with the social (economic) needs and problems of software (and similar) patents”, and identified that - rather than the convoluted legal structure - as the heart of the issue, I, for one, would've lost interest in the subject a long time ago.

Anonymous said...

@plh: a significant part of the anti-swpat community is quite heavily criticising the current EPO case law for refusing applications that lack a technical contribution under Art. 56 EPC (inventive step, COMVIK/HITACHI approach) instead of Art. 52(2)(3) EPC. That seems quite formalistic to me.

See for example the headline FFII vs Amazon: add a computer, and the EPO will give you software patents. The FFII got what it wanted, for the reasons that it wanted, except that the refusal was under Art. 56 and not Art. 52(2)(3).

(What the FFII should be interested in is the boundary of what is "technical". Question 3 goes into this.)

Anonymous said...

Rainer Bakels wrote:

Big question: shouldn't really the legislator interfere if - on both sides of the Atlantic - patent offices and courts are running in circles, for several decades now?

Mr. Bakels, you clearly get the sequence the wrong way around: the main reason why judiciary bodies such as the EPO's Enlarged Board of Appeals are left with the responsability of finding solutions to this dilemma is because the legislators, in this particular case those sitting in the European Parliament, completely abdicated their responsability to set a clear line with the CII Directive.

Apart from that, congratulations: in a single, egregiously uninformed post you have managed to offend the EPO, its Boards of Appeal, patent practitioners and the anti-swpat lobby. That's quite an achievement.

paul jakma wrote:

Also, could those patent practitioners who hold a dismissive attitude towards EU-level anti-software-patent lobbyists...

Not nearly as dismissive as the attitude of those anti-software-patent lobbyists towards patent practitioners, I may point out.

In a public debate about IT patents, the input from all sides should be welcome, provided that:

a) the facts are not misrepresented (by claiming, for instance that the EPO grants patents "ilegally");

b) everyone who wants to be listened to extends the same courtesy to their counterparts, especially if they can learn a thing or two about either patents or software from those counterparts; and

c) everyone is equally candid about the financial interests behind their positions.

Anonymous said...

My recollection is that the last time the President made a referral, the EBA threw the matter out in view of the lack of a contreverrsy. Will the same happen here?

Anonymous said...

To that last anonymous, there was no earlier referral, just a wish from the UK court that there be a referral. Now that the referral has emerged, and in such a thoughtfully argued form, it would be astonishing if the EBA were not to admit it (even though DG3 would be completely within its rights to tell the EPO President to get lost, and even though coming up with an answer that commands respect will be devilish difficult). Any estimates how long it will take Mr Messerli to come up with an answer? I'll kick off with an estimate of just under one calendar year, but I do hope DG3 will do something for its reputation for taking all the time in the world by coming up with a super answer in less than 6 months. Everybody else in the patents business is driven by diary reminder dates and official deadlines. Why not DG3 too, the more so because it doesn't have anything else to worry about, except getting its decisions out promptly, and getting them right.

To the penultimate anonymous, my compliments. Well said, that blogger.

plh said...

@Anonymous

That example seems to be about a particular patent and about patent quality, as well as formalism, and such considerations could hardly be avoided in that context. No matter what it is about, the FFII do a lot of things and obviously it does not show that they “focus all the time” on such matters.

Their websites, publications and history of activities over the years make it quite clear that they are very “interested in the boundary of what is "technical"”. They tried to get a partial definition of what is and is not technical into the CII Directive, for pete's sake, and it was largely their efforts that persuaded so many MEPs that the legislation at hand was of major economic and social importance and not just some abstruse techno-legal matter to be left to the consideration of the “experts”.

Anonymous said...

The Referral makes the vital point that what's "technical" is going to change with time. Far better that the 24 Technical Boards of Appeal of the EPO say, each succeeding year, what it means, than that some patent-unsavvy Parliament or Supreme Court in Washington DC or London lays down a frozen Binding Precedent for the meaning of "technical" which is unable to withstand the onward march of "all fields of technology". The EBA is peopled by TBA folks, public servants, honestly trying to implement the will of the people as expressed in the Convention, who will actually have to work the coal face of real cases, after the TBA opinion is handed down. Those TBA folks adjudicate, on the preponderance of evidence (so both sides have an equal chance to succeed), between a cutting edge party doing its best to push the patentability envelope outwards (that's the inventor) and another top lawyer arguing the opposite, on behalf of a party doing its best to push the envelope of patentability back into the box (that's the Opponent). What better solution can you think of "For Pete's sake"?

plh said...

@Anonymous (Sunday, October 26, 2008 1:59:00 PM)

“Far better that the 24 Technical Boards of Appeal of the EPO say, each succeeding year, what it means ... public servants, honestly trying to implement the will of the people as expressed in the Convention...”

If the independent, empirically grounded and economics-savvy public service orientation of those TBA folks could be established, I think that would indeed be a satisfactory arrangement. But although they may not have a USPTO-style “Our job is to help our customers get patents” sign hanging on their wall, their record so far doesn't give me the impression there might be a picture of Jefferson or Machlup hanging on that wall either.

Anonymous said...

G3/95 was the decision I was thinking of - not the last referral perhaps but perhaps the last referral of general interest, i.e. the patentability of plant and animal varieties. My bet is on the EBA declaring the referral inadmissible.

EdT

Anonymous said...

plh wrote:

If the independent, empirically grounded and economics-savvy public service orientation of those TBA folks could be established, I think that would indeed be a satisfactory arrangement.

Well, their independence is well established in Art. 23 of the European Patent Convention. Their economic savvy is entirely irrelevant: their job is to apply the law, not change it according to economic circumstance (that would have been the responsability of the MEPs). As for "empirically grounded", I must admit I don't have the faintest idea of what you mean by that.

If you want to discuss the economic aspects of patents, I'd suggest you read first "Innovation and Incentives" by Suzanne Scotchmer.

Anonymous said...

There's something strange about these questions. At first I couldn't put my finger on it, but now I have.

There's no mention of art 56.

Surely there should be a question 2c, regarding the assessment of technical and non-technical features for inventive step, in the case 2a is answered yes?

Without it the questions look loaded.

As for question 4a, I'm not sure it is a point of law. I can see that one at least being ruled inadmissible.

Imho, if the president was going to refer anything, she should've argued vicom is contribution approach and put it head to head with duns.

Anonymous said...

Actually, I quite like it that the EPC makes it mandatory to strike a perfect balance between "fair" scope of protection for inventors, and "reasonable legal certainty" for the public impeded by those protective rights handed out to inventors. Viewpoints change, for example as an emerging world power moves from copying to cutting edge innovation, or as an innovative pharma enterprise starts to make money out of generics. The EBA members know this, and it stimulates them to get the balance right. It's banal to state that patents can impede freedom to make and sell what computer-implemented inventions one pleases. That's why the EPC forbids patenting business methods and computer programs. But everybody who's ever been involved in product development knows that patents stimulate innovation. Look at the results of the UK Govt's mega public consultation about whether to patent computer programs and business methods. Its conclusion: the EPC is alright as it is. No EBA member needs to know any more economics than that. The rest is just irrelevant hand-wringing. It might make the wringer feel better, but it's of no importance for the present referral.

Anonymous said...

I think that the referral is a bad thing, and have to respectfully disagree with the IPKat about some of the issues.

Contrary to the suggestion of IPKat, the current situation does in fact provide a very high level of predictability for clients as to what cases will or will not be allowed by the EPO. As IPKat notes, such certainty is exactly what clients want. Unfortunately this has now been jeopardised by the referral.

The referral is supposedly based on conflict between "recent" cases, yet the only conflict is between cases that are at least a decade apart (so nobody follows the old decisions). The EPO would regard this as the development of case law (and perhaps take offence at IPKat's label of such devt as "shifting reasoning").

More importantly, the old cases and the new cases have not changed the boundary of what is or is not patentable, only the legal mechanism used for rejecting non-statutory subject matter (originally Article 52(2), now Article 56). Of course, clients are only interested in what is or is not patentable, not in the legal nuances behind such a decision.

So the referral will cause a great deal of time and effort to be wasted on what is effectively an academic question of no practical significance. This may of course be of interest to academics, but it is unfortunate for those who have to live in the real world.

Anonymous said...

Can that last anonymous say a little more. As of now, I'm not seeing the argument. If the recent TBA caselaw is settled on one line, and as a result the Applicant community now enjoys high legal certainty, why can't Mr Messerli just ask Mr Steinbrener to write a short answer to President Brimelow, explaining how the approach his Board uses neatly answers all her questions. No jeopardy. No heavy work for the EBA. Instead, done and dusted in no time. Except that I have a suspicion that it won't be quite so easy for Mr Steinbrener and, if I am right, that might mean that the legal certainty today is not quite as high as that last anonymous asserts. Could it be that, with Mr Steinbrener and Art 52, form triumphs over substance, that's not good for the reputation of the EPO outside Europe, and that the purpose of the referral is to force DG3 on to a line that can better withstand well-founded academic criticism that doesn't emanate from mainland Europe.

plh said...

@Anonymous (Sunday, October 26, 2008 6:21:00 PM)

“Well, their independence is well established in Art. 23 of the European Patent Convention.”

I find it only slightly reassuring to be told that the health & safety officer who inspects the kitchen of the restaurant I'm eating in is not one of the kitchen staff. It is not at all reassuring to me if I then discover that she was appointed by the restaurant's manager. http://www.epo.org/patents/law/legal-texts/html/epc/2000/e/ar11.html

“Their economic savvy is entirely irrelevant: their job is to apply the law, not change it according to economic circumstance (that would have been the responsability of the MEPs).”

Perhaps that's the way things should be but it is not the way things are or have been. For example, in a paper written by Maria Rossi at the time of the CII Directive¹, she noted: “the Office² has shown a tendency to interpret the art.52 sections (2) and (3) computer program exception more and more narrowly over the past fifteen years, relying on a progressively more lenient understanding of the criterion of “technical character” ... [leading to the] current EPO practice [which] can be interpreted as implying the extension of patentable subject matter toward a situation nearly indistinguishable from an express deletion of the “as such” exclusion of computer programs from patentability contained in art.52(2) and (3) EPC.” Far from merely applying the law, they have changed it and seem to have (generously) relieved the MEPs of the burden of responsibility for economic policy making in this area.

“As for "empirically grounded", I must admit I don't have the faintest idea of what you mean by that.“

It would have no meaning and I wouldn't have written it if, like you, I believed that the TBoA folk had simply applied the law and had not, in 'interpreting' it, themselves been the authors of changes in economic circumstances.

“If you want to discuss the economic aspects of patents, I'd suggest you read first "Innovation and Incentives" by Suzanne Scotchmer.“

Thanks for the recommendation.

¹ Or as another patent system economist succinctly put it to me in an email at around the same time: “I would agree ... that there is no evidence to support radical change to the patent system, but it seems that the radical change is being made de facto by the EPO and formally by the EC.”

² Although she calls it the “Office“'s tendency here, Rossi goes on to describe the well-known series of TBoA decisions.

Anonymous said...

plh wrote:

I find it only slightly reassuring to be told that the health & safety officer who inspects the kitchen of the restaurant I'm eating in is not one of the kitchen staff. It is not at all reassuring to me if I then discover that she was appointed by the restaurant's manager.

Who should otherwise appoint the members of the TBA? Who appoints the judges in most, if not all, European countries, especially to the highest courts? That's nearly always a task of the executive (eventually under the oversight of the legislative), and if you are going to use that fact to imply partialness in all of their decisions, then I must say that you are on the verge of either paranoia or bad faith. Or would you prefer a self-appointed judiciary? Can we expect any constructive criticism as to the composition of the BoA on your part?

Moreover, I'd strongly disagree with your implication that successive Presidents of the EPO would have appointed members of the BAs based on their readiness to extend the scope of patentability. The major preoccupation that EPO President's have had for quite a while now is not that of an insufficient number of patent applications, but rather that of an inflating backlog. Indeed, I think all parties agree that the Examining Divisions, which depend directly from the EPO hierarchy, tend to have a stricter view on patentability exclusions than the Boards of Appeal.

Asserting that the Boards of Appeal have "changed the law" is quite a serious allegation, because it would imply criminal abuse of power. I've read their decisions, and while I may not always agree with their arguments (heck, they often don't agree among themselves, and I don't blame them for that), they are always strictly based on the law. The problem is that the law has indeed failed to follow with the times and become an increasingly inappropriate instrument (even if, I dare say, "software patents" are hardly something new: I've found such patents, for instance in the field of character recognition, going back to at least the early sixties, predating the EPO by quite a few years).

It is not, and should not be, the responsability of the BoA to change the law. For this reason they are left to "muddle through" with what there is, and for this same reason I don't believe for a minute that the EBA's response to Ms. Brimelow is going to be the last word on this matter.

Again, this sorry state of affairs is the responsability of the legislators, not to mention that of the uncompromising stand of anti-swpat lobbyists who preferred to claim a spurious victory by scuttling the latest legislative proposal (thus sending the matter back to those judiciary bodies they so much revile), than to settle for any compromise that didn't reflect their (often contradictory) demands 100%. The egg is on their face.

Lastly, pardon my ignorance, but could you direct me to Maria Rossi's paper and to her credentials, just as I did with Suzanne Scotchmer? Because, despite my considerable google-fu, I can't manage to find any reference to her other than from anti-swpat activists in the heat of the CII Directive battles.

Anonymous said...

Readers, I think we can take much comfort from this thread. When one contemplates that the "restaurant manager" at the EPO is a committee of 34 members (the Admin Council) it's a staggering achievement that the restaurant has any sort of reputation at all. After all, look at the mess in Brussels, for comparison. But when you consider the rivals to the Munich restaurant, in America and Asia, you have got to wonder even more, how it is that the EPO got to be head and shoulders above all the rest, in reconciling flexibility with legal certainty. Myself, I put it down to the fact that no (comparatively ignorant) national court can get in there and impose its Binding Precedent on the EPO's own caselaw. Come to think about it: that's probably why so many lawyers are out to get the EPO.

Anonymous said...

I wonder if members of the extended Board of Appeal are qualified to talk about software and answer these software related questions. They usually have no experience in programming and strong ties with the patent business. They don't understand why software patenting makes developers so furious.

Gerontius said...

I don't feel inclined to get into this argument right now, except to repeat one of my previous comments that, as a patent attorney, I am not paid on a success basis - ie I am not paid based on whether or not I get a patent but for my time in trying to get a patent desired by my clients. I am also paid for providing advice on patentability, and whether that advice is "yes it's patentable" or "no, it's not patentable" doesn't affect the bill at the end.

What I will say, as it might be of interest to some readers of this particular thread and as I haven't seen it mentioned by the ipKat yet, is that I've noticed that Amazon have recently filed their grounds of appeal against the revocation of their divisional application deriving from the 1-click application.

http://register1.epoline.org/espacenet/regviewer?AP=99105948&CY=EP&LG=en&DB=REG

Could be interesting. Never thought I'd see a case where an EPO press release was used as evidence...

Perhaps the Kat would like to comment.

plh said...

@Anonymous (Monday, October 27, 2008 10:03:00 AM)

“Who should otherwise appoint the members of the TBA?”

I don't know and I'm not particularly interested in such details. Was it not clear that I simply found your bald assertion that the independence of the TBoA is “well established in Art. 23 of the European Patent Convention” to be somewhat less than satisfactory?

“and if you are going to use that fact to imply partialness in all of their decisions, then I must say that you are on the verge of either paranoia or bad faith.”

Is that why you didn't mention Art. 11 as well as Art. 23? You feared it might fuel my fevered paranoid imagination? Well I'm also not particularly interested in exactly why the direction of their decisions has been what it has been. Independence, if you recall, was only one of the criteria I suggested were important and it is independence in a Kahinian sense I intended anyway.

“Moreover, I'd strongly disagree with your implication that successive Presidents of the EPO would have appointed members of the BAs based on their readiness to extend the scope of patentability.”

There is no such implication in the mildly amused retort I wrote in response to your Art. 23 based assertion. You seem to have missed the point and become convinced I'm some kind of crazed conspiracy theorist!

“Asserting that the Boards of Appeal have "changed the law" is quite a serious allegation, because it would imply criminal abuse of power.”

A reinterpretation to the point of a near express deletion of the Convention exclusion is as good as a change as far as I'm concerned. Again, I am not interested in the legal pedantry (or in setting the police on those naughty TBoA folk!), I am interested only in the tangible, practical effects of their decisions - their authorship of changes in economic circumstance.

“Lastly, pardon my ignorance, but could you direct me to Maria Rossi's paper and to her credentials, just as I did with Suzanne Scotchmer?”

Local copy only I'm afraid. I'm sure there's a copy out there somewhere but why do you want either it or Rossi's credentials anyway?

Anonymous said...

- another anonymous: a previous 'anonymous' said:

"They don't understand why software patenting makes developers so furious."

Similarly, I do not understand why chemical engineers are not furious every time a process patent mentions that the process of 'boiling' is used as one of the necessary and sufficient steps of a process claim. Surely boiling is as old as the invention of fire, and nobody should have a monopoly on that. Not even in a novel combination.

Kind regards

Anonymous said...

Tell me about these furious developers, anonymous. Do they get furious at the mere thought of "software patenting" or is it particular patent claims that get them so excited. And, if the latter, is it particular claims that have issued from the EPO, or perhaps rather from the notorious USPTO. And unless you can explain why the claims issuing from the EPO are liable to cause legitimate fury in the mind of an intelligent developer who wants to understand European patent law and has taken the time to be competently briefed about it, why should I take any notice of your wondering. I suspect that those TBA members know more about "programming" than you know about patent law in Europe (which is NOT the same as in the USA). And, in that case, I don't see how your criticism of them can be legitimate.

Anonymous said...

plh wrote:

I don't know [who should otherwise appoint the members of the EPO] and I'm not particularly interested in such details.

You are not "interested in such details"? That is strange, since you were the one who brought up the subject of the BoA qualifications in the first place. You are simply not interested in having a constructive debate, only in preemptively impugning their integrity.

I linked to article 23 EPC for the simple reason that it is the one headed "Independence of the Boards of Appeal", and also because it is Art. 23(3) EPC which states, in case you did not bother to read it:

In their decisions the members of the Boards shall not be bound by any instructions and shall comply only with the provisions of this Convention.

I don't think at all that you are a conspiracy theorist, crazy or otherwise. I think that you merely are intellectually dishonest.

A reinterpretation to the point of a near express deletion of the Convention exclusion is as good as a change as far as I'm concerned.

It is you (and apparently Ms. Rossi) who argues that there has been such a reinterpretation. I don't see you offer any solid support for that.

I'm sure there's a copy out there somewhere but why do you want either it or Rossi's credentials anyway?

See above. If one is making allegations of such seriousness, I want to know the support for them.
As for Dr. Maria Alessandra Rossi, I now know that she is a highly qualified economist who has published a number of papers on the economics of Open Source. Which are good credentials, even if I still disagree with her assertion as you present it.

Anonymous said...

Could it be that, with Mr Steinbrener and Art 52, form triumphs over substance, ...

I don't follow this. I assume what you mean is that adding a trivial technical feature to overcome Art. 52(2)(3) is "form over substance", but then you're ignoring the well-established fact that there's no way that "form" overcomes Art. 56 if there is no "substance".

plh (October 27, 7:42:00 AM):
It would have no meaning and I wouldn't have written it if, like you, I believed that the TBoA folk had simply applied the law and had not, in 'interpreting' it, themselves been the authors of changes in economic circumstances.

I can only understand this if what you mean is that the Boards have in a way (and by now a long time ago) shifted from Art. 52(2)(3) to Art. 56. Why focus on this purely formalistic issue? Maybe you prefer the old contribution approach, well it is no more (and I doubt the referral will bring it back). What should concern you ist that this shift did not change the boundary of what claims are allowable.

Btw, Art. 23 EPC has been recognised e.g. by the ECHR as a sufficient guarantee of the independence of TBA members. This is not surprising, given the similarity between Art. 23 EPC and the corresponding provisions of other law systems. Same for Art. 11 EPC. It is perfectly normal that the executive and/or legislative branch appoint the members of the judiciary. The alternative would be holding democratic elections to find new Board members...

Anonymous:
And, if the latter, is it particular claims that have issued from the EPO, or perhaps rather from the notorious USPTO.

Usually it is the claims from the application as filed... How dare the EPO publish those applications!

Anonymous said...

Fair points, all, from that last anonymous. I had overlooked how many people (including inventors)get all steamed up about absurdly and unfeasibly wide claims in WO publications. Education, education, education, we IP folks should cry. As to Art 52/56 at the EPO, I know that absolute, not relative to the art, makes intellectual sense for Art 52 but, even so, I (and therefore many other simple folk) am still hesitant to accept that something that is manifestly, even notoriously, old nevertheless falls within the Art 52 meaning of "invention". That's something that requires even more educational skill, to get across to our public.

plh said...

@Anonymous (Monday, October 27, 2008 11:15:00 PM)

“Btw, Art. 23 EPC has been recognised e.g. by the ECHR as a sufficient guarantee of the independence of TBA members.”

I'm glad to hear it, but as I - apparently futilely - tried to explain to the (presumably) other Anonymous before he/she went beyond the pale, I used the adjective “independent” in a broad, Kahinian¹ sense which has nothing whatsoever to do with the kind of independence the ECHR would be concerned with.

“I can only understand this if what you mean is that the Boards have in a way (and by now a long time ago) shifted from Art. 52(2)(3) to Art. 56. Why focus on this purely formalistic issue? Maybe you prefer the old contribution approach, well it is no more (and I doubt the referral will bring it back). What should concern you ist that this shift did not change the boundary of what claims are allowable.”

Naturally that is what I meant. The context was the well-known key swpat-related TBoA history as described by Rossi and other eccentric and uncredentialled observers². In that context what should and did concern me, as I made abundantly clear, were the “tangible, practical effects” of that history of TBoA decisions. If that is not far enough from a focus on purely formalistic issues for you, I don't know what else I can say. Changes in approach, recent or not, that have had no such effect are obviously not relevant.

¹ http://www.firstmonday.org/issues/issue8_3/kahin/index.html#k2

² “Where are we now? The overall effect of both VICOM and the IBM twins may well be to complete a de facto reversal the software exclusion enshrined in article 52 of the Convention. Tapper certainly thinks that this is so. He comments: 'It is astonishing that the explicit provision of the Convention denying protection to computer programs have been read into virtual non-existence...'.[16] The original stance taken by the Convention seemed to be that software as such was presumed to be unpatentable unless the presumption was rebutted by evidence of something more. Now, it appears that the modern position is this. Software is presumed to be patentable unless that presumption is rebutted by evidence that the application is for software in isolation, a computer program as such. While this may appear to be no more than a change of emphasis, as any practising lawyer will know, it is an enormously important one.” – http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/2000_3/widdison

Gerontius said...

Actually, the anon above has it all wrong. It's not the published claims of the patent application that get people all riled - it's usually the abstract.

If, by some miracle, someone does actually get as far as the claims, they tend to look at (dependent) claim 23 and say "well, that feature's obvious, so how can they have a patent".

People may scoff, but I actually had something like that happen to me in a meeting with an inventor. We were looking at some prior art and it described a particular way of storing data. The inventor opined that it was disgusting how people can get patents on such obvious things. I calmly told him that the description doesn't define the scope of protection and pointed out that this feature he was talking about wasn't in any of the claims. Oh, and that it was a patent application, not a patent.

As you say: education. But people seem unwilling to be educated and instead take it as an affront when told they've got it wrong. I still got that inventor a granted patent, though.

Anonymous said...

plh wrote:

I'm glad to hear it, but as I - apparently futilely - tried to explain to the (presumably) other Anonymous before he/she went beyond the pale, I used the adjective “independent” in a broad, Kahinian¹ sense which has nothing whatsoever to do with the kind of independence the ECHR would be concerned with.

Dear plh,

If, as you say, I "went beyond the pale", I apologise. However, it seems that you are trying to redefine the word "independence", which, in my humble opinion, is not very honest. Even less so since, having gone through your link, I still fail to understand what you mean by "Kahinian" independence. I must be stupid, but I can't find a single passage in Mr. Kahin's text where he formulates it.

The context was the well-known key swpat-related TBoA history as described by Rossi and other eccentric and uncredentialled observers²

Again, the context you offer is discredit of the TBoA's decisions because "A says that B says that C says that they've virtually canceled the exclusion", without ever going into the substance of the TBoA's decision, never mind considering whether A, B or C may not be entirely impartial observers (for instance, the losing side of the decisions in question).

I can question the correctness of the TBoA's decisions. It is, after all, part of my job, and the members of the TBoA, independent as they may be, are also human and thus fallible (just like me and you).

However, the benchmark against which those decisions must be measured is the law and the logic soundness of their argumentation, nor whether they "economically" suit you or not. If you think that they are not applying the law correctly, show where their syllogisms fail (law is not that different from computing: both rely on logic).

If you can't put your finger on a specific logic failure of the TBoA, take issue with the law, but don't shoot the messenger. And if you think that your economic arguments are solid enough to sway the legislators, you are please welcome to do so.

Anonymous said...

gerontius wrote:

It's not the published claims of the patent application that get people all riled - it's usually the abstract.

Those are the attentive ones. If you go to certain online discussion groups, you'll find people hyperventilating about patent titles.

As you all say, education is important. This is why plh's insistence on "Kahinian independence" riles me so much: if you try to explain even the basics of patents to laypeople, the anti-swpat leaders immediately go: "Don't listen! He's biased!". It is very frustrating (and not a little vexating).

Anonymous said...

Just a few comments on some of the above debate. Firstly, if Ms Rossi is a highly qualified economist, it may be that her understanding of legal matters is no better than my understanding of economics.

Secondly, regarding the scope of Article 52(2), it is clear that post-Hitachi this might as well not exist. Indeed, the EPO is open about this, in that it proposed deletion of the computer program exclusion for EPC 2000 (although this was not pursued).

However, given the (re)interpretation of Article 56, the overall scope of effectively excluded subject matter is the same as for Vicom from the 1980s. (If anything, I think the EPO has narrowed what it will allow since the mid-1990s).

It is also important to remember the TRIPS language about inventions being patentable in all fields of technology. You have to interpret the computer program exclusion in a way which is compatible with this provision, which would necessarily lead to a narrow interpretation given the nature of most computer programs. (The fact that the EPC defines computer programs as not being inventions is irrelevant, because you can't use the EPC to interpret the TRIPS requirement).

Tufty the Cat said...

For those interested, I have now filed some observations on the referral, which are available here and should be appearing on the EPO's website here shortly.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':