International Obligations and “Computer Implemented Inventions”: Legal Facts, Legal Fictions

The European Patent Convention gave clear guidelines as to what could not be considered a patentable invention.

“(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

100. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;”¹

Notice how “programs for computers” are excluded from any of the criteria applied to inventions in clause 1. Despite this the European Patent Office found that a technical process produced by a computer program could be separated from the computer program itself.

“A claim which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process cannot be regarded as relating to a computer program as such.”²

After review I have found this to be correct. A “technical” process can be seperated from a computer program but only if we define properly what technicality is. The EPO were unable to do this and the result was disturbing.

“Thus, a computer program claimed by itself was not excluded from patentability if the program, when running on a computer or loaded into a computer, brought about, or was capable of bringing about, a technical effect which went beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it was run. The board has not yet decided how such a claim is to be

formulated.³

The definition of a computer program is:

“a series of instructions that a computer can interpret and execute”⁴

The definition of a process is:

“a series of actions that you take in order to achieve a result”⁵

We can see what took the EPO 12 years to figure out, that a computer program itself constituted the process that it could not be separated from, therefore the computer program itself was being patented. However instead of retreating for what was a breach of Article 52 they instead concluded that this “potential further effect” was enough to make a computer program itself patentable.

This culminated in the statement,

“Programs for computers could be considered as patentable inventions if they have a technical character”⁶

It is worth restating the EPC here,

“

no credit check payday loans (2)The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;”

This also presents legal problems under other international obligations.

The proponents of a patent liberal regime in this area point to Article 27 of the WTO's (TRIPS) Treaty to justify this position,

“1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions,whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. ”⁷

This is apparently why the EU has to consider “computer implemented inventions” patents.

Former Controller General of the UK Patent Office, Paul Hartnack commented on this,

“it depends on how you interpret these words. Is a piece of pure software an invention? European law says it isn't. Is pure software technology? Many would say no. Is it capable of "industrial" application? Again, for much software many would say no. ”⁸

The World Intellectual Property Organisation adds,

“ So far, there is no international definition of “invention”, and indeed, each national law would give you a different answer to the question as to which subject matter falls under the term patentable “invention”. In many countries, “inventions” are required to have a technical character, or to provide a solution using laws of nature.  Thus, mere economic theories, methods of doing business, mathematical methods or computer programs as such are not patentable “inventions”. ”⁹

Therefore this article is not a foregone conclusion of computer program patentability. What patent enthusiasts often fail to mention is the specific obligations in regard to computer programs under Article 10,

“Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971).”¹⁰

This obligation lays down a specific regime for computer programs. It specifies that they are to be “protected as literary works under the Berne Convention”. There is an identical obligation in the WIPO copyright Treaty.

Literary works are by definition not inventions. If literary works could be inventions then all ideas within them with application to industry, were new, and contained an inventive step could be patented as inventions. We would also not be allowed to prevent this because discrimination under Article 5 on the field of technology is prohibited.

It seems very strange to highlight Article 5 of the TRIPS Treaty as an example of how we must patent “computer implemented inventions” while ignoring specific provisions on “computer programs”. It is the legal equivalent of opening up a technical manual on the engine page when we want to change a tyre.

The WTO's interpretation on clause 10 was,

"The obligation to protect computer programs as literary works means e.g. that only those limitations that are applicable to literary works may be applied to computer programs.”¹¹

If computer programs must be protected as literary works, is there a way that they can be protected as inventions as well?

The simple answer is no. In order to protect a computer program under the Berne Convention, TRIPS and WIPO we must grant exclusive rights to the “right holder” in terms of literary works and computer programs this is the author of an original work, in turn an original work is one created by the thought processes of the author. If we were also to define computer programs as inventions these rights could no longer be guaranteed. The author of an original work could be said to be in breach of a patent when that work was executed on a computer apparatus, even though the author would have no knowledge of the patent.

If we already have special provisions for computer programs that separate them from other “literary works” can we not apply any other concepts of Intellectual property to them?

Proponents of patents would have us believe that we could, they point to the example of the European Software Copyright Directive of 1991. However while special provisions are provided under Article 6 for Decompilation this is subject to a very specific proviso,

“In accordance with the Berne Convention for the protection of Literary and Artistic Works, the provisions of this Article cannot be interpreted in such a way as to allow its application to be used in a manner which unreasonably prejudices the right holder's legitimate interests or conflicts with a normal exploitation of the computer program”¹².

This obligation is further expanded in Article 13 of TRIPS,

“Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.”¹³

Therefore although we can make certain tweaks to copyright law provisions these cannot be used in a way that would invalidate or prejudice obligations under the Berne Convention (1971),the TRIPS Treaty (Article 13), the WIPO Treaty (Article 10) . Indeed if there were such conflicts it is clear that the Treaties should override. In cases where this does not occur we would be in violation of all treaties. This would also apply to computer programs.

The other misconception is that copyright does not cover a computer program while it is being executed on an apparatus. Indeed even in 1991 the Software Copyright Directive protection provided,

“the permanent or temporary reproduction of a computer program by any means and in any form, in part or in whole. Insofar as loading, displaying, running, transmission or storage ”¹⁴

Thus the protection as a literary work was known in 1991 to include execution (the “technical process” referred to by the EPO ) and the performance of that work, not merely the expression in diskette form.

Proponents point to Article 2 of the software copyright directive to explain the principle,

“Ideas and principles which underlie any element of a computer program, including those which underlie its interfaces, are not protected by copyright under this Directive”¹⁵

Indeed they are quite right. Copyright does not protect “ideas and principles”. The most likely reason for this is to prevent “ideas and principles” from being considered any one person's intellectual property under copyright.

This is however quite revealing of the unspoken intention of this interpretation. If we pause for a moment we can see that what is actually being proposed is that “ideas and principles” could therefore be monopolised under patent law. The problem is that patent law is supposed to be for inventions rather than abstract ideas, it does after all grant a monopoly of the described invention.

There is no provision for this under international law, only in countries with an overly liberal interpretation of what can constitute an invention or a technical field. International law in both the Berne Convention and the TRIPS Treaty lay down specific provisions for computer programs as literary works, which must be treated as so without prejudice to the author to qualify.

• The European Union must consider existing international Treaties in deciding on the issue of “computer implemented inventions”.

• The EU should clarify and harmonise the existing situation across the Union by restating Article 52 of the EPC in clear language. Computer programs and thus the “technical effects” or “technical process” they produce (which are synonymous with the meaning of “computer program”) are unpatentable.

• While inventions that contain computer programs may be patentable, this patentability cannot be extended to any such program or effect produced. Thus allowing “inventions” where the only “technical” contribution is one of software running as intended would be unacceptable because by necessity it would mean reclassifying computer programs as inventions.

• The EU should enforce existing international obligations under WTO protocols upon breaching parties.

• The EU should insist that the European Patent Office properly respects Article 52 of the EPC, The Berne Convention, and The TRIPS Treaty, and does not interpret laws in a way that is ultra vires.