United States: The Supreme Court limits the scope of what is patentable. What impact for Europe and software patents?

On March 20th 2012, the US Supreme Court issued its ruling in the Mayo vs Promotheus1. It is a salutary reminder on the limits to the scope of what is patentable, for it reaffirms that laws of nature, just like natural phenomenons and abstract ideas, aren't patentable and that the limitation of the patentable field is essential for innovation.

"The US Supreme Court has just reminded that the interests of a few people to patent everything cannot supersede fundamental rights" explains Gérald Sédrati-Dinet, April's volunteer consultant on patents. " With all due respect to the European patent microcosm, this decision underlines how important it is for each patent jurisdiction to be bound by an independent supreme court : it's a salutary reminder to those who attempt to divert unitary patents"
This decision relates specifically to a patent, which the Court dismissed, about a medical procedure applied to a specific drug, about its administration, about the extent of its effects and about the adaptation of the dosage if the drug is overdosed or under dosed. The case was brought before the Supreme Court because the patent is based on a "law of nature", which is one of the exceptions to patentability under U.S. law, as are natural phenomena and abstract ideas. Software belong to the latter category.
Even if the decision does not say much about software patents2, it still brings us two important lessons3.

Limiting the patentability scope

First, the Supreme Court went against the advice of the U.S. government and dismissed the idea that there was no need to consider the patentability of the subject matter (the laws of nature), because the patent could be rejected on other grounds (lack of novelty and/or lack of a sufficient description). The question of the scope of patentability and of the invention's actual patentability is therefore put on the foreground, despite the policy of the U.S. special court (CAFC Court of Appeal of the Federal circuit) who refrained from asking the very question.

The policy of CAFC is similar to the practices of the European Patent Office and of some national courts or patents offices (especially in Germany), who simply examine the novelty of the issue, irrespective of what is patentable and what is not. Here, the Supreme Court clearly states that the mixture of rejection criteria cannot filter all patents that should be rejected. In other words, contrary to recent practice, the question of an invention being within the scope of patentability or not should be considered separately.

Importance of an appeal to a Supreme Court

Furthermore, it should be noted that the Supreme Court rejected a patent that was granted by the U.S. Patent Office, then invalidated by a court of first instance, but restored by the CAFC, the Court of Appeal specialized in handling all patent cases in the U.S.

At the same time, with the unitary patent, European Union is setting up a unified court specializing in patents. It is fundamental to ensure that future decisions of this specialized court should be subject to review by the European Court of Justice (ECJ). This is the only way to achieve balanced and fair judgements when the patent law faces other legal areas, such as competition law or fundamental rights. The opponents of the patents microcosm (lawyers, judges, patent offices) toil to impose exactly the opposite: a minimum involvement of the ECJ so that everything is decided by co-opted judges.

The decision of the US Supreme Court shows how dangerous it would be to allow a specialized patent court to decide of the interpretation of patent law without control, as it could result in obstructing medical research. It is the conclusion of the decision of the U.S. Supreme Court:

"After all, patent protection is a double-edged sword. On the one hand, the promise of exclusive rights provides monetary incentives that lead to the creation, innovation, discovery. On the other hand, the same exclusivity may hinder the flow of information that could allow and even encourage the invention, for example by increasing the cost of the use of patented ideas once they were created."

While the U.S. position, initially in favour of software patents, evolves to address the abuses to which they lead, France and the European Union seem willing to take the opposite direction, harming innovation and competition. It is therefore more important than ever to raise awareness and to act against software patents and the unitary patent.

"The US Supreme Court has put back in their places those who thought they could patent everything" , says Jeanne Tadeusz, April's Public Affairs Officer. "For France and Europe, this is a wakeup call about the dangers of software patents, which is the biggest threat to innovation in the software industry. We therefore expect strong commitment of the candidates in the French presidential election and the inquiry Candidats.fr will allow them to clarify their views on these points."

Fore more information, please visit the website http://www.brevet-unitaire.eu on the unitary patent and the candidats.fr workbook on all the dangers hidden behind software patents.

About April

Pioneer of free software in France, April is since 1996 a major player in the democratisation and the spread of Free Software and open standards to the general public, professionals and institutions in the French-speaking world. In the digital era that is ours, it also aims to inform the public on the dangers of an exclusive appropriation of information an knowledge by private interests.
The association has over 5,500 members, using or producing Free Software.
For more information, you may go to the following website: http://www.april.org/, contact us by phone at +33 178 769 280 or through our contact form.
Press contacts:
Frédéric Couchet, Executive Director, fcouchet@april.org +33 660 688 931

Jeanne Tadeusz, Public Affairs Officer, jtadeusz@april.org +33 1 78 76 92 82

• 1. The ruling is available on the Supreme Court's website
• 2. Whereas some legal briefs in amicus curiae, that is to say, briefs sent to the Supreme Judges by experts to offer their interpretation of the law, argued on the comparison.
• 3. For more information on the dangers of software patents, see April's positions on this subject.