As mentioned in April's 2008 retrospective [4], the president of the European Patent Office (EPO), Alison Brimelow, submitted a questionnaire to the Enlarged Board of Appeal (EBoA), the office's highest jurisdiction, on the 24th of October 2008 aiming to fix the limit of what can be patentable in the domain of software. With help from FFII [5], April took this opportunity to submit an <em>amicus curiæ</em> brief [6] to the EBoA, to express April's position on software patents [7], and thus contribute so that the decision of the senior civil servants in the EPO can take into account the opinion of those opposed to software patents
Why issue an appeal to the Enlarged Board of Appeal of the EPO?
If we want to systematize the function of the EPO, we may consider that this non-elected intergovernmental organization includes an administration Council - in charge of defining the rules regarding patents - and examination boards - executive authorities approving or disapproving patents - but also technical appeal chambers - in charge of internal jurisdiction and to which one can address his complaint, either regarding an improperly granted patent, or either regarding a supposedly unfair rejection of one's request.
But since several technical appeal chambers have adopted contradictory opinions in different files regarding software patenting, the EPO's president submitted the question to the Enlarged Board of Appeal - acting as an internal supreme court - in order to solve the issue.
We must note that such a step had already been requested in 2007 by the British judge Jacob, one of the main makers of the so-called "English doctrine", which came to reject many software patents. But at that time, his request had been rejected by Alain Pompidou, Alison Brimelow's predecessor as president of EPO. However, the questions submitted by Lord Justice Jacob were most relevant.
The questions asked by the president of the EPO
The text addressed to the Enlarged Board of Appeal sets four questions to be discussed. The first question is to determine whether a piece of software is excluded from the scope of what is patentable only if the patent request is specifically related to a "computer program". It refers to what iss called in the patenting terminology as a "program product" [8]. This kind of claim was accepted by the EPO in 1998 for a patent claimed by IBM. Its aim is to offer a protection directly to the computer program, that thus needs an authorization from the patent holder to be distributed, therefore setting the responsibility not only on the conceiver and the users of a competitor's piece of software, but also on those who distribute it.
The other three points are split into many sub-questions. They attempt to define a distinction between patentable software innovation and the rest. The second question deals with wether storing it on a media - therefore a physical support -prevents a computer program from being excluded from the field of patentability. The third question looks into pieces of software that have technical effective on a physical being in the real world. Would such a case provide the required technical aspect of the claim, thus making it acceptable for patenting? And the last question deals with the mere activity of programing and asks wether this implies necessarily technicality, in which case all sofware would be patentable.
The way these questions are formulated, with the exception of the first one that is relatively direct, suggests that their answers will allow for a continuation ot the EPO's current practices. Indeed, thousands of software patents were granted based on the fact that they produce a "technical" effect. Yet Alison Brimlow's questions never define what is considered as "technical". Even worse, her questions don't request it to be defined either.
We must compare this kind of approach to the questions asked by the British jurisprudence that we mentioned above:
- What is the proper approach in determining whether an invention applies to an unpatentable object as defined by article 52 [of the European Patent Convention (EPC)].
- When it comes to deciding whether an invention is new and yields an innovative activity as defined in articles 54 and 56 [of the EPC], how are such elements of a claim to be dealt with when they apply to an unpatentable object?
- And specifically:
- a) Is a computer program loaded on a device support such as a chip or a computer's hard drive excluded as stated in article 52 (2), except if it produces a "technical" effect? And in which case, what do we mean by a "technical" effect?
- b) Which are the main characteristics that exclude the methods that allow to produce economic activities (or business methods)?
Obviously, the president of the EPO did not wish to ask such simple and direct questions. The reason is probably that she asked the staff of the Appeal Chambers to write these questions, that therefore remain very similar to their own doctrine. The questions above asked by the British judges could have led to significantly different answers from the current line of the thought within the different bodies of the EPO. Therefore we can wonder wether the EPO is really seeking answers , or if it only seeks confirmations.
The answers of April:
Before such an assessment, the FFII has been working to defend the viewpoint of those opposing to software patents [9]. Following the rules of the EPO's internal jurisdiction, April has joined this initiative by sending an amicus curiae record [10]. In such an exercise, that is frequently met in the Anglo-Saxon legal systems, the point is not to answer directly the questions set by the EPO's president, but to share one's expertise so that the senior judges of the EPO can give their answer with all the required elements in mind.
Thus April has wished to send to the EPO its global viewpoint on the issue of software patenting [7] and to point out that today's office practices, that has granted thousands of software patents over the last twenty years, were in contradiction to the spirit and the wording of the European Patent Convention.
Obviously, April has stated that the answer to the first question should be a negative one, as the sole exclusion of claims on "programs product" could make acceptable algorithm patenting.
In order to answer to the second question, April has outlined a certain number of decisions from the EPO's appeal courts that have used the stratagem of claims on storage media in order to circumvent the patent exclusion regarding computer programs. This made Richard Stallman [11] state that the EPO was an evil and corrupted organization.
Since the third question is about the "technical effects", April didn't want to answer directly, because it's based on this terminology without ever defining it that the EPO has distorted the unpatentability of software. We may recall that what is "technical"' or not, had been discussed as crucial by the directive of European Union that was threatening to legalize software patents in Europe, until the Parliament rejected this project in July of 2005. April has thus used a rewording of the so-called "forces controlled by nature" - which had been set forward by those opposing to software patents during the European directive examination – by asking to distinguish whether the knowledge derived from the subject of the claim was related to data usage –a modal property excluding the patent claims – or whether its properties had either a physical or a chemical property, in which case the subject is patentable. This rewording is based on the recent decisions in the US have allowed to exclused business methods, mainly during the famous Bilski case [12].
Finally, as the fourth question is suggesting that all software development is "technical" – and therefore its result is to be patentable - April's answer is to reaffirm that the activity from which results the subject of the claim wasn't a determining point when judging patentability and that we could but state that nearly all the programmers who learnt about the content of any software patent found it to be ridiculous.
The expected results of this appeal before the EBoA
It's difficult to predict what will be the result of this appeal before the EBoA . As it was explained above, the wording of the questions leads us to the conclusion that this is only done to validate tthe EPO's current way of dealing with software patents so that they can be continued without missing sense of duty.
Still, it's remarkable that this appeal raised a lot of comments and that we have even reached a record with approximately 90 memories en amicus curiae sent [13]. It is therefore important to underline that April has been able, with the help of FFII, to reaffirm the unpatentability of software, during this brainstorm of opinions [14].
We will now have to wait several months for a reply by the EPO. But whatever it is going to be, this will remain an internal decision on software patents. This topic should require a definite and unambiguous political decision from the democratic bodies, such as the European Parliament.