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[DMCA-Activists] UK Top Court Rejects SW Patent, Criticizes EPO Doctrine
From: |
Seth Johnson |
Subject: |
[DMCA-Activists] UK Top Court Rejects SW Patent, Criticizes EPO Doctrine |
Date: |
Mon, 01 Aug 2005 07:32:24 -0400 |
(The EU executive bodies recently attempted, and failed, to pass
a Directive that would have codified the EPO's practice of
granting software patents, despite the 1973 European Patent
Convention's explicit exclusion of software from patentability.
This rejection represented a very strong historical register for
the idea of actually obeying the letter of the law, and makes it
harder for the EPO to rationalize their practice as "the status
quo." What follows seems to me to be one of the outcomes of this
development, along with the increased number of hitherto silent
or noncommittal parties we now see coming out of the wings and
taking the principled stand against software patents. It's in
this sense that the EU Commission's attempts to characterize the
rejection of the Directive as a victory for those who introduced
it (ostensibly because rejection avoided a "messy" law), are
ineffectual and false. Short of actually crafting a good law,
this outcome was a great one for information freedom. -- Seth)
> http://wiki.ffii.org/Cpfh0507En
UK top court rejects software patent, criticises EPO doctrines
26 July 2005 -- In a recent court ruling at the highest court of
the UK, a software patent was rejected on the basis of Article 52
EPC with reasoning that criticises current doctrines of the
European Patent Office and rejected directive proposal from the
Commission and Council and demands a "harder" exclusion of
software.
In the Halliburton vs Smith case
(http://www.bailii.org/ew/cases/EWHC/Patents/2005/1623.html) , a
software patent was rejected for reasons we have yet to analyse
separately.
On the same day the judgment in "CPFH's Application" was
published
(http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html),
which is also well worth a read.
Both were recently noted in the IPKat blog
(http://ipkitten.blogspot.com/).
CPFH's Application: How pure software is to be effectively
excluded
"What is an 'invention'? That is what this case is about"
-- so begins Mr Prescott QC in line one of his judgement on
"CPFH's Application", before going out of his way to give a
complete tour of Art 52 EPC: given in the High Court
(http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html) ,
coincidentally on the same day as the "Halliburton vs Smith"
case.
There are a lot of points he makes well. And not least, his
strong approval that there are some very good reasons for not
allowing patents on pure software:
35. The same approach cannot be taken to computer programs. The
reason why computer programs, as such, are not allowed to be
patented is quite different. Although it is hotly disputed
now by some special interest groups, the truth is, or ought
to be, well known. It is because at the time the EPC was
under consideration it was felt in the computer industry that
such patents were not really needed^[14]
http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note14
were too cumbersome (it was felt that searching the prior art
would be a big problem
http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note15
,
and would do more harm than good
http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note
. I shall not go into details here but it is worth noting that
the software industry in America developed at an astonishing pace
when no patent protection was available
http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note17
Copyright law protects computer programs against copying. A
patent on a computer program would stop others from using it even
though there had been no copying at all. So there would have to
be infringement searches. Furthermore you cannot have a sensible
patent system unless there exists a proper body of prior art that
can be searched. Not only are most computer programs supplied in
binary form -- unintelligible to humans -- but most of the time
it is actually illegal to convert them into human-readable form
http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note18
A patent system where it is illegal to search most of the
prior art is something of an absurdity.
36. For those and other reasons it is not surprising that in,
this instance, the exclusion is "harder". You are not allowed
to get round the objection -- that you are attempting to
patent a computer program -- by claiming it as a physical
artefact, a mere change of form. You cannot patent "A
computer /disk/ when storing my computer program" or "A
/computer/ when programmed to function according to my
program". For if that were allowed you would get a monopoly
to the use of your computer program, defeating the policy of
the law. (There may be superficial exceptions but they turn
on the fact that your invention is not a mere computer
program.)
37. Recently, the scope of this exclusion has been under re-
consideration by the European Union
http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note19
The Commission wanted to harmonise the law by defining the
line between inventions that are properly patentable and mere
computer programs. Although not strictly relevant to what I
have to decide, I must admit I watched developments with some
anxiety. Had the proposal succeeded it would have entrenched
a test involving 'technical contribution' and 'technical
features' that I suspect is too vague to be workable at the
margin. On 6 July 2005 the proposed directive was defeated in
the European Parliament and it will not be re-introduced.
[...]
91. The legislation requires that, in order for something to be
patentable, it must /be/ an invention, it must be susceptible
of industrial application, it must be new, and it must
involve an inventive step (i.e. it must not be obvious).
Those are four conditions. They are mandatory. None of them
can be reasoned out of existence under the guise of
interpretation.
92. By "//be// an invention" I mean not be excluded by Article
52(2). If something is an invention in that sense we can call
it "technology" for short. I shall revert to that presently.
93. It must also be the law that, for something to count as new
and non-obvious, it must do so /under the description/
'invention', in that sense. It is not enough that something
is new and not obvious if the sole novelty or inventive step
consists of something that is excluded from basic
patentability by Article 52 (but it must really be excluded
by Article 52: see further below). Tomorrow's newspaper will
be a manufactured article; it will certainly be a new
article; and at least some of its contents will not be
obvious. But the newspaper will not be patentable on mere
account of the novel and non-obvious information it presents.
For the news itself will not satisfy those conditions under
the description 'invention', but only under the description
'excluded matter'. There must be unity under the four
conditions. Likewise, if it should turn out that tomorrow's
newspaper is printed with a new but obvious ink, it will
satisfy three out of the four conditions, but that will not
be enough.
94. To that extent I believe the EPO is right no longer to apply
the "technical contribution" test. Properly regarded, that
was a two-stage test that identified what was new (not
disclosed in the past) and then asked whether it was
'technical' (i.e. not excluded from patentability). But it
cannot be right to stop there. The new advance also must not
have been obvious to those skilled in the art and that too
must be under the description 'technical' (i.e. not excluded
from patentability). In practice it may not be useful to
consider whether something is an 'invention' without
considering whether it is new and non-obvious. Much the same
thing was said by the House of Lords in /Biogen Inc v. Medeva
plc/ [1997] RPC 1, 42.
95. A patentable invention is new and non-obvious information
about a thing or process that can be made or used in
industry. What is new and not obvious can be ascertained by
comparing what the inventor claims his invention to be with
what was part of the state of the existing art. So the first
step in the exercise should be to identify what it is the
advance in the art that is said to be new and non-obvious
(and susceptible of industrial application). The second step
is to determine whether it is both new and not obvious (and
susceptible of industrial application) under the description
'an invention' (in the sense of Article 52). Of course if it
is not new the application will fail and there is no need to
decide whether it was obvious.
96. In order to identify what is the advance in the art that is
said to be new and non-obvious the Patent Office may rely on
prior art searches. But in my judgment it is not invariably
bound to do so. It will often be possible to take judicial
notice of what was already known. Patent Office examiners are
appointed because they have a professional scientific or
technical training. They are entitled to make use of their
specialist knowledge. Of course the letter of objection will
state the examiner's understanding of the technical facts in
that regard, and thus the applicant will have the opportunity
to refute it in case there has been a mistake.
97. Reverting to "under the description 'an invention'", 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', see paragraph 11 above. But sometimes it will
not be possible without running the risk of error, see
paragraph 12. If there is any doubt it will then be necessary
to have recourse to the terms of Article 52 of the
Convention.
Comment by James Heald
This could be sharper: I'd like to have seen it more closely
related to the EPC. I like the stress that this should be a
tightening of procedure, not a relaxation. But of course it
doesn't work if it allows the definition of what is technical to
slip, and therefore what sort of contribution can be considered
technical. "Technical" must be held to mean something beyond the
functioning of a programmed computer, and characteristics which
only relate to that functioning.
Interesting, if it can be read as a UK attempt to "embrace and
extend" the EPO doctrine - ie constructively engage with the
formalism, but simultaneously give it a much less permissive
application, and hope that the shift will percolate back to
Munich. More Quotes
103. It was the policy of the "computer program" exclusion that
computer programs, as such, could not be foreclosed to the
public under patent law. (Copyright law is another matter.)
They would be foreclosed if it was possible to patent a
computer when running under the instructions of the program,
for example, or magnetic disk when storing the program.
104. But the mere fact that a claimed artefact includes a
computer program, or that a claimed process uses a computer
program, does not establish, in and of itself, that the
patent would foreclose the use of a computer program. There
are many artefacts that operate under computer control (e.g.
the automatic pilot of an aircraft) and there are many
industrial processes that operate under computer control
(e.g. making canned soup). A better way of doing those
things ought, in principle, to be patentable. The question
to ask should be: is it (the artefact or process) new and
non-obvious merely /because/ there is a computer program? Or
would it still be new and non-obvious in principle even if
the same decisions and commands could somehow be taken and
issued by a little man at a control panel, operating under
the same rules? For if the answer to the latter question is
'Yes' it becomes apparent that the computer program is
merely a tool, and the invention is not about computer
programming at all. It is about better rules for governing
an automatic pilot or better rules for conducting the
manufacture of canned soup.
105. Of course, if it were about better rules for running a
business the idea would not be patentable.
More Comments from James Heald
(Note that these are both High Court decisions -- ie routine
patent case decisions, not Appeal Court decisions. But even High
Court decisions involving software patents are very very rare).
The discussion of Art 52 EPC in Halliburton starts at paragraph
207. The case didn't turn on Art 52: the judge principally threw
out the patent on the grounds of insufficient disclosure.
Regarding Art 52, the judge held that the creation of a design
for a drill bit was a mental act as such; but creation of the
design and subsequently using it to make the drill bit was a
technical process.
This is very close to FFII thinking. What was new was bringing in
a new principle to the creation of drill bits, namely balancing
the forces to reduce uneven wear, which had not previously been
systematically achieved before. This is (literally!) a teaching
about using the forces of nature in a different way to that
previously achieved, use of the teaching defining a new
distinctive characteristic of drill bits, which identifies a new
class of drill bits which correspond to the patent's teaching.
Ironically, it's therefore very analogous to case study 11 in the
UKPO workshops which the UKPO criticised FFII's definition for
(http://www.patent.gov.uk/about/ippd/issues/cii-workshops-
case.htm), because most workshop participants thought this
application would be allowed under the FFII-UK Forces of Nature
definition, whereas the UKPO thought it should not.. It seems the
High Court agrees with the participants!
Where I think Judge Pumfrey is not right is his identification of
Art 52 EPC as concretising the requirement for "susceptibility of
industrial application". He's reading the words "inventions
within the meaning of paragraph 1" in Art 52(2) as equal to
"inventions which are susceptible of industrial application,
which are new and which involve an inventive step" in Art 52(1),
(ie "patentable inventions" ?), rather than the word "inventions"
in Art 52(1) by itself.
It's an interesting reading, but IMHO off the mark, because I
think the Art 52(2) test and the "susceptible of industrial
application" test have come to mean different things. Instead I
think the mainstream view would be to read the classes in Art
52(2) as not inventions even if they are susceptible of
industrial application.
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