18 January 2010

Interesting CII Cases in Europe, the US and Germany

This "Blawg" is basically dedicated to the pros and cons of software protection through IP rights (i.e. so called "software patents" or, more corectly expressed, "computer-implemented inventions") and will thus try to follow the ongoing (worldwide) discussion in this highly controversal field of IP practice and politics.

This year we will see important developements (or setbacks, depending on the viewpoint) in this field. In fact, 2010 may bring a turning point or consolidation in the discussion on CIIs since important cases are pending both in Europe and the US. 

In Europe it's pending case G3/08 being a referral to the Enlarged Board of Appel of the EPO in which the Board has to decide on the following questions:

  1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?
  2. Can the exclusion be bypassed by tying the claimed invention to a piece of hardware?
  3. Must a claimed feature cause a technical effect in the real world in order to contribute to the technical character of the claim?
  4. Does the programming of a computer necessarily involve technical considerations?
The enormous interest of the public, NGOs, professionals and industry is documented by the fact that more than 100 Amicus Curiare Briefs have been filed by third parties, many of which expecting a decision on the merits. However, a number of Briefs - especially those from patent law experts - also raise the issue that the refferal may not be permissble since the requirements of Article 112 EPC are not met. Such concerns are based on the question whether or not really "different decisions" were issued by "two [different] Boards of Appeal". This concern has, inter alia, been raised in the Briefs of Emeritus Professor Straus of Max Planck Institute for Intellectual Property (cf. here) and the"Patentanwaltskammer" i.e. the German Patent Bar Association (cf. here).

For the United States patent practice the outcome of the case In re Bilski, which presenty is pending at the US Supreme Court, is expected to be groundbreaking. In this case the highest US court has to decide on the question whether or not the patentability of a process claim can exclusively be verified by the Machine-or-Transformatin-Test (MOT) requiring that a process
  1. is tied to a particular machine or apparatus; or
  2. transforms an article from one thing or state to another.
Good collections of related material have been compiled by AwakenIP or on Finnegan's Bilski page. An oral hearing on Bilski's and Warsaw's petition  has already been held on November 9, 2009. To learn a bit on the two men who originated this debate, you may be interested in this interview with Mr. Bilski and Mr. Warsaw. 

Futher interesting developments having impacts on US and German CII practice are ex parte Gutta (cf. decision by the US Board of Patent Appeals) and the decision X ZB 22/07 of the German Federal Court of Justice (Bundesgerichtshof) addressing similar questions. I may later refer to these two cases in more detail.