The European Commission has issued a draft directive on the patentability of computer implemented inventions following a period of consultation. Following the consultation exercise, the EC has recognised that changes must be made to the law on patents for computer programs. The EC’s stated objective is the harmonisation of protection for computer software to provide an incentive for European companies, and in particular smaller companies, to use patents in order to fully exploit the computer software. The EC has identified that its objectives cannot be achieved at national level and the case law and administrative practices of member states in relation to computer software has been divergent for many years.
The directive has been much anticipated and there has been overwhelming support for clarification of this complex and ambiguous area of intellectual property law.
Patents are important weapons in the corporate arsenal, providing a monopoly right to prevent anyone other than the owner from exploiting an invention for a period of 20 years without the owner’s consent. As well as providing this monopoly, patents are able to act as an incentive for companies to invest time and capital into the inventive process and this in turn assists in the development of new technological processes in a wide variety of fields.
The problem with obtaining patents for computer programs stems from the inadequacy of the current patent legislation to deal with the advances and realities of the new information society. The European Patent Convention (EPC) and individual member states legislation expressly excludes from patentability computer programs "as such".
Despite this exclusion, the Patents Office has recognised that certain computer programs are worthy of patent protection and have adopted a flexible approach. The Patents Office has side-stepped the exclusion in certain cases by determining that the application does not relate to the software programme "as such" but relates to a computer – implemented invention which is patentable due to its "technical character" (ie. Belonging to a field of technology). In determining what computer implemented inventions have a technical character, recent case law suggests that all programs when run on a computer are by definition technical by virtue of arising from a machine. The European Patent Office and National Patents Offices using this reasoning have granted thousands of patents.
The situation has been criticised, however, given that there is no consistent approach either within the European Union or globally which will provide comfort for companies seeking to enforce their patents in court. Obtaining a patent in the USA has been made much more straightforward by recent legislation. The invention must simply be "within the technological arts" and there is no requirement for a technological contribution. A software programme only needs to provide a "useful, concrete and tangible result" in order to obtain patent protection. In contrast, historically European Patent Law has required the presence of an inventive step in securing patent protection. One of the questions for the commission was whether to adopt the simplified US approach or maintain the requirement of an inventive step.
The Commission’s Approach
The Commission has now expressed the view that the directive should harmonise protection for computer software while avoiding any sudden changes in the legal position, and in particular any extension of patentability of computer programs "as such".
The Commission has cast doubt on the US approach, and refers to the ongoing debate in the US as to whether extending patents may stifle e-commerce. The draft directive sets down conditions for the patentability of a computer programme which may be patentable on the condition that it is:
- Susceptible to industrial application
- New
- Involves an inventive step
It is up to member states to ensure that it is a condition of involving an inventive step that a computer implemented invention must make a technical contribution to the state of the art. This contribution is to be assessed by consideration of the difference between the scope of the patent claim considered as a whole, elements of which may comprise both technical and non technical features, and state of the art. This is in stark contrast to the recent practice that the European and English Patent Offices have taken to patent software programs "as such".
The directive provides that a method for doing business may still be patentable if a non-obvious technical contribution is present. However, if there is no technical contribution then there is no patentable subject matter. The Commission is required to monitor the impact of computer software on innovation and competition, both with Europe and internationally, and on European businesses, including e-commerce. There is also a requirement in the draft directive for the EC to report to the Parliament and the Council on the directive’s operation within three years from the date by which member states are required to transpose it into national law. This provision is to be welcomed and is designed to ensure that the directive keeps up with the pace of innovation.
Whether the new patent directive will indeed harmonise the legal position remains to be seen. Critics of the draft proposals have pointed to the potential for ambiguity over the meaning of a "technical contribution to the state of the art". There are those who also argue that the EC should be adopting a US style approach, making it easier to obtain a patent.
The next stage in the process will be the publication of a final draft of the directive that will be published in the official journal of the European Community. Following publication in the journal, member states will begin the process of consultation and drafting the necessary secondary legislation to implement the directive. The draft directive does not contain any guidelines as to when publication of the journal might take place. It is generally agreed, however, that given the confusion surrounding the law at present this cannot come soon enough.
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The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
