[News] EPO Swpat Guideline

PILCH Hartmut phm at a2e.de
Sat Oct 6 11:52:52 CEST 2001

While the European Commission is preparing a directive on the limits
of patentability with special regard to software, the EPO has
published new examination guidelines:

        EPO press release: Amendment of the Guidelines for Examination
        in the European Patent Office regarding the patentability of
        business methods and computer-related inventions

in which it codifies its recent practise of of 

        stealing with a further property-creating effect 

and obliges examiners to abide by this practise.

When reading the new guidelines, you may want to keep in mind the clear
definition of the 

        EPO Guidelines of 1978 

       programs for computers:

          A computer program may take various forms, e.g. an algorithm, a
          flow-chart or a series of coded instructions which can be
          recorded on a tape or other machine-readable record-medium, and
          can be regarded as a particular case of either a mathematical
          method (see above) or a presentation or information (see
          below). 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. For example,
          a claim to a computer characterised by having the particular
          program stored in its memory or to a process for operating a
          computer under control of the program would be as objectionable
          as a claim to the program per se or the program when recorded
          on magnetic tape.

and compare this to the scorn of law and logic expressed in the
present EPO guideline.  What is cited below can be summarised in short
as follows:

1. Art 52(2) EPC is a list of non-inventions.
2. "Programs for computers" are "computer-implementable inventions". 
3. A computer program can be patented as such, if it has a "further
   technical effect".
4. Practically any solution to a computing problem constitutes a "further
   technical effect".

Note that the EPO itself has deconstructed the notion of "further
technical effect" in a document of summer 2000

        EPO business method patenting guideline

where it states bluntly:

   This scheme makes no mention of the "further technical effect"
   discussed in T1173/97.  There is no need to consider this concept
   in examination, and it is preferred not to do so for the following
   reasons: firstly, it is confusing to both examiners and applicants;
   secondly, the only apparent reason for distinguishing "technical
   effect" from "further technical effect" in the decision was because
   of the presence of "programs for computers" in the list of
   exclusions under Article 52(2) EPC.  If, as is to be anticipated,
   this element is dropped by the Diplomatic Conference, there will no
   longer be any basis for such a distinction.  It is to be inferred
   that the Board of Appeal would have preferred to be able to say
   that no computer-implemented invention is excluded from
   patentability by the provisions of Articles 52(2) and (3) EPC.

Meanwhile, the Diplomatic Conference did not decide "as anticipated",
and we are faced with a rubble pile of 30000 trivial and broad EPO
patents on programs for computers, granted in anticipation of a change
of law.  Nevertheless the EPO is pretending that nothing happened and
creating rules for the future based on a deconstructed wordplay of the
past, for with there is "no longer any basis".

Examination Guidelines are adopted by the presidents of patent
offices.  EPO president Dr. Ingo Kober was perfectly entitled to wait
for decisions from the European Commission or from the EPO's own
Enlarged Board of Appeal before rushing forward to "confuse both
examiners and applicants" by codifying shoddy reasoning from the
lower-ranking Technical Board of Appeal.

In the same impatient spirit, Mr. Kober published this summer an
article in GRUR (Gewerblicher Rechtschutz und Urreberrecht -- leading
German IP magazine), in which he affirms the unlimited patentability
of all automatable processes (practical and repeatable solutions
according to EPO judge Mark Schar) and especially stresses that this
applies to all business methods.  This postulate is embedded in
euphorical rhetorics about the central role of patents and of the EPO
in the "knowledge economy of the 21st century".
Before acceding to his current post, Mr. Kober worked in the the
German Ministery of Justice (BMJ) as a secretary of state appointed
due to his membership in the co-governing Liberal Democratic Party
(FDP).  On his current post he reports to the European Patent
Organisation, a group of national governments represented by patent
departments such as that of the BMJ, and serves his customers, the
"users of the system" (large corporations) that finance the EPO by
their fees.


   2.1 The Convention does not define what is meant by "invention", but
   Art. 52(2) contains a non-exhaustive list of things which shall not be
   regarded as inventions. ...

   Mathematical methods
   Scientific Theories
   Aesthetic Creations
   Plans and Rules for Intellectual Activity, for Games and for Ways of Doing Business
   Programs for computers
   Programs for computers are a form of "computer-implemented invention",
   which expression is intended to cover claims which involve computers,
   computer networks or other conventional programmable apparatus whereby
   prima facie the novel features of the claimed invention are realised
   by means of a program or programs. Such claims may e.g. take the form
   of a method of operating said conventional apparatus, the apparatus
   set up to execute the method, or, following T 1173/97 (OJ 10/1999,
   609), the program itself. In so far as the scheme for examination is
   concerned, no distinctions are made on the basis of the overall
   purpose of the invention, i.e. whether it is intended to fill a
   business niche, to provide some new entertainment, etc..
   The basic patentability considerations here are in principle the same
   as for other subject-matter. While "programs for computers" are
   included among the items listed in Art. 52(2), if the claimed
   subject-matter has a technical character, it is not excluded from
   patentability by the provisions of Art. 52(2) and (3). However, a
   data-processing operation controlled by a computer program can
   equally, in theory, be implemented by means of special circuits, and
   the execution of a program always involves physical effects, e.g.
   electrical currents. According to T 1173/97 such normal physical
   effects are not in themselves sufficient to lend a computer program
   technical character. But if a computer program is capable of bringing
   about, when running on a computer, a further technical effect going
   beyond these normal physical effects, it is not excluded from
   patentability, irrespective of whether it is claimed by itself or
   as a record on a carrier. This further technical effect may be known in the
   prior art. A further technical effect which lends technical character
   to a computer program may be found e.g. in the control of an
   industrial process or in processing data which represent physical
   entities or in the internal functioning of the computer itself or its
   interfaces under the influence of the program and could, for example,
   affect the efficiency or security of a process, the management of
   computer resources required or the rate of data transfer in a
   communication link. As a consequence, a computer program claimed by
   itself or as a record on a carrier or in the form of a signal may be
   considered as an invention within the meaning of Art. 52(1) if the
   program has the potential to bring about, when running on a computer,
   a further technical effect which goes beyond the normal physical
   interactions between the program and the computer. A patent may be
   granted on such a claim if all the requirements of the EPC are met,
   see in particular Art. 84, 83, 54 and 56, and 4.5 below. Such claims
   should not contain program listings (see II, 4.14a), but should define
   all the features which assure patentability of the process which the
   program is intended to carry out when it is run (see III, 4.4, last


Hartmut Pilch                                         http://phm.ffii.org/
Protecting Innovation against Patent Inflation	    http://swpat.ffii.org/
90000 signatures against software patents       http://www.noepatents.org/

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