EU Plans Harmonisation Of Laws For Software Patents

The European Commission (EC) has proposed a directive to harmonise the law across the European Union (EU) in relation to computer-implemented inventions. Although the availability of software patents via the European Patent Office (EPO) route has already ironed out some of the diff e rences between Member States, the acceptability of software patents to the various national patent offices and courts differs markedly.

The proposed directive defines a computer-implemented invention as being " any invention which involves the use of a computer, computer network or other programmable apparatus and having one or more prima facie novel features which are realised wholly or partly by means of a computer program or computer programs".

To be patentable, a computer-implemented invention must make a technical contribution to the state of the art. A technical contribution is one that is not obvious to a person of normal skill in the field and is more than just a computer program "as such". Merely "computerising" a known method or technique, and, significantly, the mere computer implementation of a business method, will not qualify as a technical contribution under the directive. The requirement of a technical contribution is not new and is well founded in case law, especially in the EPO. Further, the exclusion of computer programs "as such" mirrors the exclusion in Article 52 of the European Patent Convention. The reference to prima facie novelty is certain to be the subject of much debate as the directive proceeds through the legislative process. It is unclear whether this will have the effect of watering down the level of absolute novelty re q u i red in E urope .

In defining the scope for software patents, the EC has sought to maintain the boundaries between the areas protected by patents and by copyright. Therefore , isolated computer programs, without the machine on which they run, will not be patentable. This distinction is also intended to ensure that "reverse engineering" will not be prohibited in all circumstances and that back-up copies can be taken. These p rovisions are consistent with the interoperability provisions of the previous 1991 software directive.

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To be adopted, the directive re q u i res the approval of both the European Union's Council of Ministers and the European Parliament. This has not been a str a ightforward process with previous proposals in the IP field, for example the Designs Directive and the Biotech Directive. Therefore, it could be several years before this directive is adopted, and its scope may by then be significantly diff e rent. In the meantime software and business method patents continue to represent "opportunities" for companies to extend their asset base, while at the same time posing "threats" in respect of potential infringement. We will keep you informed of significant developments.