Brimelow Referral on Software Patents

In short: The referral to the Enlarged Board of appeals is the most important substantive battle in Europe regarding software patents since the Directive Proposal has been rejected by the European Parliament in 2005.

The FFII contacted a large number of associations, companies and individuals across Europe making clear the importance of the referral (see our press release Software patents plot buried under amicus avalanche). The FFII submitted an Amicus Brief: G3-08_amicus_curiae_brief_FFII_de.pdf (pdf, German) and wrote and helped for the submissions of others like ASOLIF (G3-08_amicus_curiae_brief_ASOLIF_en.pdf), a Spanish federation of 150 companies.

Nearly 100 such briefs have been filed by various organisations, institutions and individuals, which is unique in the history of the EPO and is Enlarged Board of Appeal. The complete list of all Amicus Briefs is at: http://www.epo.org/patents/appeals/eba-decisions/pending/briefs.html

The FFII has also translated into English a very interesting statement submitted in German by a patent examiner at the German patent office. kiesewetter_acb_english.pdf

The FFII is working on an analysis of the ACBs available at ACBs' analysis page

What Referral G3/08 means

In October 2008, the President of the European Patent Organisation, Alison Brimelow, issued four questions to the Enlarged Board Of Appeal at the European Patent Office. A copy of the original PDF can be found here. Some very quick answers to these questions (courtesy of Peter Gerwinski) are available here.

The referral suffers a series of problems. The most important can be divided into the following groups:

  1. Selective, suggestive and misleading: The questions in the referral might seem clumsy or complicated at first, but on a closer look it is probably more likely they are suggestive and misleading on purpose. Some o the assertions are incomplete or simply wrong (e.g. that a product would not infringe a patent if the patent contains no explicit product claims). Like the decisions of the Boards of Appeal, the referral avoids to define the central and most vital core points of its subject (e.g. "technical", "technical effect", "further technical effect", "technical character") in any non-tautological way. Some questions are so utterly suggestive that almost any answer implicitly has to agree with the same hidden assumptions the EPO bases its practise on or elaborate more meaningful definitions than the EPO did during the last 20 years. Furthermore, even the EPO admits that the questions were eventually triggered by a dissatisfied UK court (in Aerotel/Macrosan), but that court proposed much more open questions. So why haven't these questions been adopted or at least been reflected upon in the referral?

  2. Institutional shortcomings: The Enlarged Board of Appeals is part of the European Patent Office, therefore an executive body. However its behaviour and effects are those of a court and even a de facto legislative power - there is no separation of powers. Even the EPO itself admits that the Boards of Appeal as well as the Enlarged Board of appeal are not independent.

  3. Legalising the illegal: There already have been various attempts to legalise the EPO's practise of granting patents on software despite Article 52 (2) EPC. After it became clear in 2000 that the diplomatic conference would not remove the exclusion of software patents from the EPC, a directive proposal was put forward on the EU level which was rejected by the European Parliament in 2005. Despite the diplomatic and democratic will being quite clear, the EPO is now asking itself to legalise its practise. And the questions referred to the EBoA all contain the same key points as the directive proposal (see below for further details).

Upcoming and recent Events/Talks

These are only events and talks regarding the EBoA referral. For other events, please check ffii.org and ffii.de.

Past events, talks and materials are archived here.

News

More news regarding the FFII's involvement in the referral case will be archived here.

Current Status

The Enlarged Board of Appeal also called for submissions from third parties, so called Amicus Curiae documents. While the Enlarged Board of Appeal is no Court it issues "opinions" for the administrative practice on patent granting. The granting process is largely steered by the legal interpretations of the EPO Boards of Appeal, mere administrative opposition chambers composed of patent technocrats. Neither the political rejection of the proposed deletion of the software patent clause in the EPC in 2000 nor the rejected EU software patent pratice impressed the EPO much which acts high above checks and balances as a supranational body of its own. The EPO leaves it to its exployees to extend its competence to grant patents. The EPO centralises granting for many European states and European patents are a bundle of national patents. You can challegenge software patents in national court, often with success, but even professional national judges are drawn into acceptance of EPO "case law" gravitation and their dissent has no direct legal effect for the EPO - No national court or legislator can stop them from granting exclusive rights under national law, even the software patent directive in the parliament version would just have prevented enforcebility of the abusive EPO grants under national law. While it is expected that the Enlarged Board of Appeal would codify the ongoing patenting of computer programs by the EPO, it could well show a way out of the software market mess created by the BoA in the past without a political mandate to expand patentability.

You find some background documentation to the case on the EPO server:

Several amicus briefs, Amicus Curiae Briefs, were already submitted, including: CIPA, PHILIPS (which bases its arguments for software patents on alleged TRIPs obligations) and Jacob Hallen.

Please note that Amicus Curiae briefs are no consultations in the narrow sense but about legal arguments which is a fundamental constraint. Despite large societal and economical implications the chamber is not competent to take into account the "rationale of a market system"(Hayek) or the majority opinion in the software industry. It is very important to understand the administrative "case law" background of the questions and the circumvention decisions of the boards of appeal concerning the exclusion of software-related teachings (as well as algorithms, mathematics, music and other aesthetic creations etc) as not being inventions within the meaning of the EPC 52(2). Some followers of the debate are aware of the notorious "as such" teaching developed by the EPO boards of appeal and usurpative BoA decisions like T1173/97 IBM- Computer Program Product.

We are looking at ways to contribute to this process of the EPO, for instance based on our FFII's 10 core clarifications, or the two rules shorter version and invite you to discuss the issue on our mailing list with us. The quality of contributions from our side will rely on the quality of our research into the legal trick box of the patent sphere.

A deadline for our contributions is end of April but the decision of the EBOA can take much longer.

This wiki is just one workspace that was originally intended for the OCR. You need FFII membership and login to edit comments on this wiki. Ask on polis-help at ffii.org to get one. There is also a read-protected page with references to different texts and we have a dedicated mailing list for you to help us: BOA

If you rather want to contribute to political awareness raising about software patenting we suggest you to join our softwarepatents mailing list. As a side note you should be aware that the EPO is not politically neutral but massively intervenes into public deliberations for instance with their propaganda brochure, by the award of inventor prices to software patent inventors or lobbying the European Parliament to pursue its commercial interests in software patenting.

Questions:

(quick premature observations from the OCR team that extracted the text in cursive, please discuss with us how you would answer the questions)

Q1 CAN A COMPUTER PROGRAM ONLY BE EXCLUDED AS A COMPUTER PROGRAM AS SUCH IF IT IS EXPLICITLY CLAIMED AS A COMPUTER PROGRAM?

A1 No. Its just excluded as any such exclusion should be, implicitly.

Q2 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?

A2 No. That would be a very strange loop hole...

Q3 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?

A3 Yes. That would be the meaning of the exclusions in art 52, as abstract things separated from real world.

Q4 DOES THE ACTIVITY OF PROGRAMMING A COMPUTER NECESSARILY INVOLVE TECHNICAL CONSIDERATIONS?

A4 No. Computing by its own means, i.e balancing memory vs steps should not add patentability, since that is rules for organization and calculation alone.

EPO Summary of the referral

(page 2)

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.

Where does Art 52 EPC state all fields of technology? see: http://www.epo.org/patents/law/legal-texts/html/epc/1973/e/ar52.html

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 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.

And this uncertainty is due to EPO-praxis rendering the exclusions set in those days meaningless.

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.

Too restrictive? The situation is just the opposite - restrictions have been called for world wide.

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).


That translates into:

- Q1: Relevance of category (software exclusion at all?)

- Q2: As a whole...

- Q3: features of a claim

- Q4: skill/technicality of a programmer


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.


1) 5th Meeting of the lnter-Governmental Conference for the Setting up of a European System for the Grant of Patents, held on 24-25 January and 2-4 February 1972, BR/168 e/72 eld/KM/gc, p14,36

2. DEFINITIONS

(page 3)

A __computer program__ is a series of steps (instructions) which will be carried out by the
computer when the program is executed.


A __computer__ is understood to include not only devices which are generally thought of as
such, for example desktop PCs, but any programmable apparatus (such as a mobile
phone or an embedded processor).


The term 'computer program' ('program' for short) is synonymous with 'software' and a, 'program for a computer'.


For the purposes of this referral, the methods referred to in hypothetical examples are
intended to be methods which can be implemented wholly by computer.

Do you have other legal and professional definitions about what computer programs, data processing and software are? Please let the members of our mailing list know?

EPOReferral (last edited 2010-04-12 21:40:21 by ggiedke)

Hosting sponsored by Netgate and Init Seven AG