24 January 2012

The European Patent Office and its Approach to 'Software Patents' including some comparative Comments on the German PTO's Practice

On the ksnh::law blog we take exceptional care about the discussion on and legal development of protection of computer-implemented inventions, aka 'software patents'.

With our latest posting we completed a small series of three articles on the respective legal foundations of and the examining practise in this field of European and German patent law. 

EPO Examining Practice:
Patents for Software? How the EPO Examines Software Inventions and what Lessons can be Learned.
This article provides an in-depth analysis of the extended problem/solution approach, the most important formal examining scheme for software inventions as developed by the Boards of Appeal around the turn of the century. The specific characteristics of that approach is that non-technical features of a claim can be considered as prior art upon examining inventive step – to the detriment of applicants (!). The second headnote of the Comvik decision T 641/00 puts this important finding like that:
II.  Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.
Consequently, applicants and especially their patent attorneys should make sure that the specification and the claims do not at all comprise non-technical aspects or or only to the required extent, in order to prevent that proper and limiting technical features are “devaluated”.

EPO Legal Foundations (Boards of Appeal Case Law):
EPO Case Law on Patentability of Software Inventions From the 80ies Until Now. 
The legal development in this field did not always go linearly and some approaches were abandoned or modified throughout the years. However, since the G 3/08 opinion basically affirmed the status quo, i.e. the pragmatic problem-solution approach as sketched in T 641/00 (COMVIK) and T 258/03 (Hitachi), case law has reached a rather stable situation, providing legal certainty for applicants of software inventions. Thus, in this particular question, Europe appears to be one step ahead of the US and other important patent jurisdictions in the world.

German Practice and Case Law:
German Federal Court of Justice Confirms New German Approach To Software Patent Examination
In the past three years we were handed a number of quite interesting decisions from the German Federal Court of Justice, especially
By the latter decision, the German two-stage approach to examination patent-eligibility of software-related inventions can be considered established.

Even though the Germany approach resembles the EPO's approach, it is not identical with it. The difference between the approaches might be illustrated by the fact that a pure business method implemented on a conventional computer or computer network would in Germany be excluded as a “computer program as such” without even considering prior art, while the EPO would rejected this method for lack of inventive step since its differences over prior art only involve non-technical features.

In Germany, applicants of software inventions will be on the safe side if the invention is claimed within an embedded system framework, i.e. as a method controlling a technical apparatus or collecting, evaluating and processing (technical) data by means of a technical apparatus.

The recent development of German case law is to be considered positive for applicants of software inventions, as it overcomes the earlier investigation of the individual case and thus creates legal certainty due to an easier-to-understand and thus easier-to-adopt examination systematics.

16 January 2012

The EU Unitary Patent at the Beginning of 2012 - News from Brussels, London, and Copenhagen

The first two articles on our ksnh::law blog in 2012 have drawn a promising but fragile picture on the condition of the Unitary Patent and Unified Patent Court in the beginning of 2012.

It certainly is a sign of progress (although some would say in the wrong direction) that the Secretariat of the EU Council is about to finalise the Regulation for implementing the Unitary Patent (see Document CM 1068/12). Apparently, the dice is cast with respect to the Unitary Patent and, thus, with respect to the highly controversial question as to whether or not Articles 6 to 8 (effects of patents) should remain in the proposed Regulation so that substantive patent law will be subject to review by the Court of Justice of the European Union in future.

As opposed to the opinion of some players (and some bloggers) but in line with others (see e.g. here, sec 1.2.2), it is the position of the ksnh::law blogging team that,

when having a look to the overall structures of patent law, it appears to be completely coherent to include these provisions just into the Regulation (which replaces national patent law comprising similar statutory clauses).
But, as we all know, further problems need to be solved in case of the Agreement on the Unitary Patent Court, especially the "things that are not so difficult", as addressed by EU Commission President Barroso below, namely the decision as to where the important Central Division of the Unified Patent Court will be situated. Candidate cities with good prospect are reported to be London, Paris, and Munich. It is expected that this stuck issue will have to be decided on the level of the heads of government by lateral talks between Prime Minister David Cameron, President Nicolas Sarcozy and Federal Chancellor Angela Merkel on the margins of some EU meeting. 

In another article titled "European Scrutiny Committee of the UK House of Commons On Unitary Patent" we reported on concerns of the 'UK Scrutiny Committee' that the new unitary patent system could disadvantage British small businesses. Since the conclusions of the Committee were not very favourable, questions may arise as to whether or not such national concerns could endanger the entire project of unitary patent protection in Europe when the UK Government and Prime Minister David Cameron listen to such voices. And if so, would David Cameron really dare to bury the second important EU project with in a few months.

JM Baroso and H Thorning-Schmidt meet on 12 January 2012 in Copenhagen
Officially, the new year began for the European patent system project with the Danish administration under social-democrat Prime Minister Helle Thorning-Schmidt taking over the Presidency of the EU Council from Poland and making clear that the EU Patent Package (Directive on Unitary Patent; Agreement on Unified Patent Court) is one of the (many) key issues to be resolved in the first half of 2012 (see Program of Danish Presidency):
Special emphasis will be on the directives on [...] the common European Patent system [...].
Come what may, Ms Thorning-Schmidt will surely not be able to count on euro-sceptical opposition parties Dansk Folkeparti (right-wing populists Danish People's Party) and Enhedslisten (communist Unity List party), which in the meantime demand a national referendum on whether Denmark should join the Unified Patent Court system, since its establishment would transfer national sovereignty in the field of patent jurisdiction to the European Union (see here).

Despite all those problems, EU Commission President José Manuel Barroso took an optimistic outlook on the Danish presidency on the occasion of a meeting with Ms Thorning-Schmidt on 12 January (press release):
Frankly we are almost there; there are now some divisions between France, Germany and Britain on things that are not so difficult. We can finalise the Community patent that we have been discussing for 30 years so it is about time to come to a solution and I know that Denmark will put its influence to find a solution.