Software Patents – Patently Necessary

January 1, 2005

In 2002, the EU Competitiveness Council proposed a Directive on the patentability of computer-implemented inventions, more popularly known as the Software Patent Directive. With software innovation developing at an ever-increasing pace, the Directive was designed to provide uniformity across all the EU member states as to what could and couldn’t be patented. However, two years on, the future of the Directive now looks uncertain, following sustained lobbying from the open source community and the recent withdrawal of support from the Polish Government.

Software patents aren’t new – European companies have been obtaining patents for software inventions for the past two decades. However, in the past two years the Directive has become something of a legislative hot potato, with some fierce lobbying by those who believe that patents are harmful to the software industry. By the time the Directive was read in Parliament, in September 2003, its opponents had led MEPs to believe that the Directive sought to extend patentability of software inventions to include business methods and processes. This was also the reason given by the Polish Government for withdrawing its support. In actual fact, the Council was very explicit in its aim when presenting the Directive – to codify and unify existing law throughout the EU, rather than change it.

Current patent law in Europe was drafted in the 1960s and specifically excludes business methods and computer programs ‘as such’. The ‘as such’ clause has given Patent Attorneys much to argue about. The practice of the European Patent Office (EPO) has evolved in the face of a great deal of case law to allow patents for inventions using software where the invention makes a ‘technical contribution’. There is no definition given to ‘technical’ and, although this has been the subject of much criticism, it is a tool to facilitate the distinction between software inventions and software ‘as such’.

Whilst business methods can be patented in the U.S, there was nothing in the original Directive that suggested that existing EU patent law would be extended and allow for a floodgate of spurious patents. In contrast, the latest version of the Directive, far from broadening what can and can’t be patented, actually makes restrictions to one significant area of patentability.

The proposal (Article 6) is that the interoperability clause, which is used in respect of software code protected by copyright to allow de-compilation without infringing on the copyright, will extend to patents on software inventions. Consequently, many inventions in protocols in the telecoms industry, for example wireless to wireless communication or wireless to landline communication, could be copied without infringing the patent.

This amendment goes to the heart of one of the major areas for confusion for the opponents of the Directive. Many argue that software patents are unnecessary and that copyright provides enough protection. It is true that copyright protects software code, but patents and only patents can protect the function or action caused by the software. If the EU were to restrict patentability on software further, it would be in contravention of The World Trade Organisation’s TRIPS agreement, which states that patent must be available in all fields of technology. Not only that, but the EU would be the only major economy where it isn’t possible to protect computer-related inventions. As a result, member states would be exposed to competitors in the United States, Japan, China and India.

Moreover, it is virtually impossible to draw a neat dividing line between software and electronic and mechanical inventions. For instance, there are many digital processing innovations which lie at the heart of technology such as digital television or X-ray imaging – areas which few would deny are patentable inventions. The Directive has sought to provide as much clarity as possible in this area; as long as the Directive is stalled, confusion will remain and genuine inventions could be under threat.

Cutting through the hype, uniformity in approach is actually very important for inventors and developers in the UK. This is because the EPO and UK Patent Office take a slightly different approach when determining patentability. The UK Patent Office is bound in its current approach by Court authorities, but argues that in ‘most’ cases the end result will be the same. Clearly this difference in approach will not lead to the same result in ‘all’ cases. The proposal is that all the member states adopt the EPO’s approach, meaning inventors will have a great deal more certainty that their patent will be enforceable throughout the European Union. This remains the objective and it can only be of benefit to the software, electronics and telecoms industries that the Directive should be allowed to proceed.

Dr John Collins is a partner at Marks & Clerk, the UK‘s largest firm of patent and trade mark attorneys: