LASP

Fourth posting on EPLA...may the force be with you...

Originally posted yesterday on the IPKat responding to the second post by the patent attorney who originally commented on my first EPLA post. However, reposted this morning to make some corrections.

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Ok, now I have worked out how to delete comments, I have reposted my comment of late last night correcting some typos, clarifying a few comments and deleting one quite amusing unintended double negative :-)

You politically try to state that nobody is reading what you are saying carefully enough.

"There is nothing political.."

However, from my perspective you are not reading what I am saying and are also not reading what Peter Prescott was saying - I personally find it highly amusing that you try to use CFPH to justify your opinion that the EPO are habitually granting patents that they should not.

I don't need to - you only need to go and examine the patents the EPO has granted. As it's your profession, why don't you go and read some patents and see that the EPO has granted thousands of patents for computer programs or computer-implemented inventions which have foreclosed the software element. Once you have counted the number of patents for software, go back to Prescott's judgement and read para 25

“25. Article 52(3) indicates that a subject-matter is excluded ‘only to the extent’ that a patent relates to it ‘as such’. This is confusing. In the past it has led some people to think that you should be able to patent any new, non-obvious idea, so long as what is claimed as the invention does not consist only of excluded subject-matter. According to that reasoning you could patent an excluded item e.g. a computer program by the formal device of claiming some physical artefact (e.g. “A magnetic disk in which my program is stored”, or “A computer when operating under the instructions of my program”). And indeed if it were just a question of interpreting Article 52(3) as if it were an Act of Parliament, they might have been right. However, it is not an Act of Parliament, and they were not right.”

Please note, an excluded item..."a computer program". I don't think this needs interpretation, a computer program is an excluded item. Now go and read all the exclusions. You might just start to see a pattern in the madness of our forefathers... there is something that a NUMBER OF THE EXCLUSIONS have in common, they seek to prevent IDEAS, MENTAL THOUGHTS, EXACT SCINCES etc from being patented and hence avoid the creation of a knowledge tax. The basic constructs of mathematics, mental thoughts etc should not be patentable. Please now try and adopt a 'purposive approach' to the exclusions given this is an international convention. If you can't see that computer programs are meant to be excluded go back to step a. If you get confused with the words 'as such' and 'to the extent', go back to paragraph 25 of CFPH judgement and maybe also paragraph 103 (and the little man test) in respect of hybrid inventions. I think my explanation of how the words 'as such' and 'to the extent' in my article referenced above is completely consistent with the need to address hybrid inventions which involve a computer program. I think I clearly set my explanation out in my article. I am sorry that you cannot follow this explanation or that you are blind to the logic behind the Article 52 exclusions. Not everything should be patentable. There are certain fields of human endeavour which are rewarded by other forms of intellectual property protection.

Now having estalished that a) software patents have been granted by the EPO; and b) software is an excluded item, please explain how you can reason that the EPO is interpreting the EPC in the same way as Prescott QC does (or any other person adopting a purposive interpretation of the exclusions) when despite the fact that Prescott clearly considers computer programs to be excluded subject matter we are swimming in computer program patents! To give you just one snippet of how the interpretation of the EPO has mutated in 30 years to fit the needs of their 'customers' better, take the reasoning in the recent patent application of:

http://legal.european-patent-office.org/dg3/biblio/t030424eu1.htm

"Moreover, the Board would like to emphasise that a method implemented in a computer system represents a sequence of steps actually performed and achieving an effect, and not a sequence of computer-executable instructions (i.e. a computer program) which just have the potential of achieving such an effect when loaded into, and run on, a computer. Thus, the Board holds that the claim category of a computer-implemented method is distinguished from that of a computer program.”

I'll translate what the board is saying: computer program on its own =computer program, computer program run (now hey presto it's doing something) in a computer system (er..didn't know computer programs were meant to run in a computer system, that's magic..) = patentable. Er...seems pretty damn close to what Prescott was saying was the 'wrong' interpretation of the computer program exclusion in para 25 of his judgement. The net result of the board's view is that computer programs are foreclosed (patented) if not considered in the abstract but as part of a computer system. Now, go back and read the EPO's examination guidelines back in the 1970's and read the current guidelines in respect of the exclusions - once again there has been a mutation in a way which distorts the purpose behind the Article 52 exclusion on computer programs. You say that you are an expert on these exclusions. If this is the case, I really don't need to explain the linkages and relationships between the exclusions.

He warns of the dangers of granting patents wrongly and states, very strongly, that appropriate lines should be drawn. However, his line in the sand appears to me to fall squarely with the EPO's, even though his is drawn with a stick and the EPO are using a pebble. To stretch the metaphor further (!), Mr Prescott is clarly of the opinion that the pebble is something of a blunt instrument compared to his stick, but that is where his criticism of EPO practice ends.

You are entitled to your opinion (well, you are in an EU society which hasn't quite yet slumped as low as sanctioning the patenting of ideas/thoughts....perhaps one day you will have to pay a patent licence to express your opinion ;-) ) - I think Prescott makes it quite clear that he thinks the EPO adopts an overly broad interpretation of 'technical effects' with the result that software is found to have technical effects. See also my discussion above

I managed to track down your article and can find none of the answers I was looking for: what is a "software patent" or "software-assisted invention" (definition, please), and what is the appropriate purposive construction of "as such"?

This is quite funny. Of course you would be looking for a definition of 'software invention', you are a patent attorney and perhaps after all those years of studying the 'mantra' (to borrow from you) of patent attorney textbooks, you might find it hard to believe that there is NO SUCH THING as a software 'invention'. If you read my article again you will see I quote a well known software executive and developer who summed the situation up very well when he said that the term 'software invention' was a term invented by lawyers (with no doubt some help from patent attorneys). For me the expression 'invention' in the context of what is a 'patentable invention' has to be defined by reference to the EPC and, as I explained earlier (as noted by Prescott), a PATENTABLE invention is defined negatively by what IT IS NOT and IT IS NOT SOFTWARE. Again, as far as software assisted inventions are concerned, the actual PATENTABLE part of the invention is no different then any other physical invention in the fields of technology which are patentable fields as per the EPC, it is just that in creating the physical effects which are patentable (because they satisfy all the criteria for patentability) a software program is involved but, in a purposive interpretation model, the software element would not form part of the patentable claims and the actual software would not be patentbale (although it would be protected by COPYRIGHT!). Now a perfect example of the kind of invention that fits this explanation is ABS, the braking system. As for 'as such' and 'to the extent' please read above - I spent about 500 words explaining what I saw as the purposive approach. Other people have managed to grasp what I was advocating.

- I've reviewed some of the preparatory materials for the EPC and it looks to me that the framers weren't quite sure what they meant by it either, so it is disingenuous to imply that there is one interpretation that is correct ( e.g. yours) and another which is incorrect (e.g. the EPO's).

I can point you in the right direction. Go back to CFPH and read his footnote references. I AM NOT SAYING MY INTERPRETATION IS CORRECT. However, as explained by Prescott, the EPC is an international convention which is meant to be interpreted in a purposive fashion. A bit like EU directives and Article 249 of the EC Treaty. Now, if I read the whole of Article 52, for me the framers did intend to exclude computer programs from being patentable. This is also the view of Prescott, and I have highlighted his wording above, it is for him 'an excluded item'. Now, the EPO is not adopting Article 52 in a purposive fashion and this is blatant by the fact, as noted above, we are swimming in software programs which have been patented and from the decisions of the Board of Appeals and the EPO (the above example is just one recent statement which clearly evidences the distortion of Article 52 by the EPO/BA). So, YES I DO THINK THE EPO/BA ARE SERIOUSLY OFF COURSE and WRONG. Prescott also used the word 'wrong' in paragraph 25 when talking about those who thought that 'as such', in relation to computer programs, was meant to mean that a computer program could be patented if claimed together with a physical artefact or process, including a computer. This is the EPO's interpretation of 'as such' as evidenced by their decisions and patents granted and 'as such' they are wrong. By the way, I do not consider individual examiners to be at fault here necessarily. The change in EPO/BA approach has been a gradual one and has, for me, been directed from the top.

You also do not appear, to me, to have picked up on the intricacies that resulted in current EPO practice and baldly state that they are being non-consitutional in their application of the law. Patent attorneys clearly have more to offer the debate than merely administrative details judging from the failure by so many people to understand this very specialised area of law, of which the exclusions are an even narrower sub-specialism. That is my job - to understand the interpretation of the law by the EPO and UKPO and to try to get my clients patents within those intepretations.

Yes, your job is to get your clients patents. Now you believe you have the legitimate right (without there being a presumption of conflict of interest) to get involved in a debate about what should and should not be patentable. I think you have answered your own question.

I am not an economist or a software programmer or a lobbyist, so it is not my place to say whether the current scope of protection afforded to computer-implemented inventions is correct or not - and you will note that I have not done so. I have merely questioned your insistence that the EPO have got it wrong since (a) I have yet to see a precise definition of what you think is "right" and (b) the EPO are not, in my view, saying what you think they are saying.

If questioned, I would admit that I am largely supportive of the EPOs position, but that is largely because I see it as being a vast improvement over the situation in the US - any patent system is better than theirs! I also think that the case law of the EPO (when properly applied, to use the words of Peter Prescott) should not result in the nightmare scenerios you envisage, so am not sure what it is you are objecting to.

It is true that EPO examiners make mistakes (by not properly applying the case law) and grant a number of patents that they should not - the Amazon one-click divisional being a prime example, and I fully expect the opposition to be successful on that case. But the fact that such mistakes occur does not mean that the system is broken, it means that examiners must continue to be vigilant - again quoting Mr Prescott.

Anyway, since neither of us is apparently able to read or understand the comments of the other, I will be leaving this debate now and going off to have a nice relaxing weekend. Hopefully at least one person reading this will be able to understand my points.

I understand your points, I just don't agree with the majority of them. I'm sorry that you can't see through the smokescreen created by the books you read to become a patent attorney. I am also sorry that you cannot see what is straight in front of you, a sea of software patents granted by the EPO despite the clear purpose behind the Article 52 exclusions. Go talk with some software developers, go try and understand the software industry (here, I mean the majority of the IT industry which is made up by SMEs, not IBM, SAP and Microsoft). As you are a fan of science fiction, I suggest you read some sci-fi books and go figure what it might be like if a patent attorney 100 years ago had been able to patent the plot of books, robbing you (or at least reducing the possibility through increasing the barriers to entry) of reading many more wonderful books which have taken similar plots and made them great (and better) stories (without infringing copyright)...now go back to software. Enjoy the journey and when you have seen the light...get back to me. May the force be with you.

Cristian www.lasporg.info