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The European Parliament voted overwhelmingly July 6 to reject the “Directive on the patentability of computer-implemented inventions.” With subsequent newspaper headlines proclaiming “European Parliament Rejects Software Patents” and “EU Parliament finally says NO to software-patents,” it’s understandable that U.S. applicants — who submit more than 25 percent of European patent applications — might think it is now impossible to obtain software patent protection in Europe, and that it never was possible to get software patents there. Wrong on both counts. Obtaining software patents from the European Patent Office always has been possible and will continue as such for the foreseeable future, despite the July 6 vote. During the last 30 years, the EPO granted more than 30,000 software patents, or more correctly, patents on “computer-implemented invention.” Indeed, Ingo Kober, the EPO’s president, has described software patents as “an essential element of the European patent system.” Because U.S. applicants account for more than 50 percent of the issued European software patents, Philadelphians need to understand the source of the confusion regarding Europe. Before the July 6 vote, many people mistakenly thought the EPO did not issue software patents because article 52 of the European Patent Convention appears to expressly forbid it. After all, Article 52 contains this relevant paragraph:
“(2) The following in particular shall not be regarded as inventions . . . “(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers.”

That would seem to be pretty clear cut: No patents on programs for computers. But then, there is the much-studied “as such” clause. The European Patent Convention is a legal document, so it’s no surprise there is a modifying paragraph following, which reads:

“(3) The provisions of paragraph 2 shall exclude patentability of the subject matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”

The key words are “as such.” The EPO takes the position that inventions must be considered as a whole when determining whether they are patentable. The “as such” clause, according to the EPO, means the items mentioned in Article 52(2) — schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers — are only not patentable if they constitute the entire invention. A computer program, in particular, therefore is not patentable only if that’s all there is to the invention. If a computer program is merely a part of the invention, that invention may be patentable as long as the invention as a whole meets the patentability standards, specifically that it is new, has an inventive step and industrial applicability. That is the way valid, enforceable software patents have been obtained in Europe. The specification and claims are carefully written to ensure there is a clear technical problem being addressed and the software is only part of the innovative solution, not the solution “as such.” European software patent claims have, therefore, been drafted along the following lines: “An invention which solves a technical problem comprising: (A) a computer controlled machine, (B) software which, upon loading into a software processor of (A) causes process XYX of the machine to occur.” The major national courts in Europe have recognized the EPO arguments regarding software patents and upheld the issued patents. All of this raises some questions, including: If software patents were available and honored in Europe, what is the point of the computer-implemented inventions directive, and why was it rejected so decisively July 6? EU Directive COD/2002/0047, as the computer-implemented inventions directive was formally known, began as the European Commission’s attempt to harmonize software patentability across all EU countries. The idea was to codify the EPO’s existing practice, and so formally bring European national law broadly into line with what the EPO has been doing all along. The problem being addressed was that, although the European Union countries’ national patent offices and their national courts have tried to follow broadly the EPO’s approach to patenting software, there is no legally binding obligation for them to do so in the absence of a formal EU directive. Elements of the European software community hostile to software patents, however, hijacked the software directive. Some of this opposition is based on idealistic grounds that ideas should be free, and some stems from a fear that software patents will allow large American companies to continue their dominance of the European software market. The Foundation for a Free Information Infrastructure (FFII) and the Free Software Foundation of Europe successfully lobbied members of the European Parliament to add amendments to the directive which, if adopted, would have meant no more software patents could be issued, and that existing software patents would be weakened significantly. Big software business and the European Commission fought back. A few weeks ago, the pro-patent lobby appeared to be winning when the European Parliament’s legal affairs committee voted to reject the proposed amendments. The stage seemed set for the European Parliament to adopt the directive without the amendments. But last-minute FFII activity paid off. In the first round of voting on the directive, it became clear the full parliament was heading toward reintroducing the software patent-restricting amendments. Deciding that the status quo was preferable to a directive with the added amendments, the pro-software members of parliament changed tactics. They joined with the anti-software members and voted against the directive in the second round, thereby ensuring a resounding defeat. As a consequence, the directive is dead and the European Commission has said it will not try to draft a new version. Where does all that leave your clients who want software patent protection in Europe? After four years of effort, the net result is that everything remains the same. There will be none of that elusive “harmonization at the European Union level,” which the Brussels bureaucrats wanted, but patents for computer-implemented inventions will continue being issued by the European Patent Office and the national patent offices of Europe, and the European national courts will continue to uphold them. Peter Langley, a London-based patent attorney and founder of Origin Ltd., an intellectual property law firm that advises clients such as European techno giants Nokio, Psion and Symbion, agrees. “It’s just business as usual,” Langley said. “The EPO will continue to allow algorithm/software patents where a technical contribution can be shown. Likewise, national patent offices will continue to uphold those kinds of patents. Whatever you were doing for your clients before July 6 regarding software patents in Europe, you can and should continue to do.” Roy J. Rosser is a patent agent with Synnestvedt Lechner & Woodbridge, the nation’s third-oldest intellectual property law firm, with offices in Princeton, N.J., and Philadelphia. Rosser is also an inventor, some of whose patents cover the technology used to implement the popular “virtual first down” on TV football broadcasts.

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