I know some of you may be attending the UK Patent Office's Technical Contribution workshops, some this week, so for you especially I thought it would be good to share this with you, and so I am. I wish to thank Ms. Bowles for permission to do so. Perhaps it will help you to formulate questions and prepare information to share at the workshops. I think you will see that you have your work cut out for you.

In any controversy, I believe the best thing is to listen respectfully to all views, to be sure everyone understands what the others are expressing. What I saw in reading this email is that some supporting software patents have not yet understood what the issues are that those who oppose software patents see. If nothing else, reading this will help them to tweak their presentations. If Ms. Bowles writes this to one Groklaw reader, we can assume the same points are being made to others.

Those working in the legal field are trained to listen to every detail when the other side speaks, not to be convinced, but to note the strengths and weaknesses of each side's arguments, so as to answer and strategize effectively. It's how I approach any conflict.

A valid question to ask those who want software patents is, Why? Leave aside Microsoft and why we believe they want them for a moment. Are there any sincere reasons others may have or think they have? If so, what are they? There are answers to that question in this email. Publishing it doesn't mean I have altered my views, personally. I hope patents and software get a divorce. But I am interested to know why others see it differently. My primary interest is, at a minimum, to carve out a safe zone for Linux and FOSS. If that can be done, I wouldn't care what patent-depending companies want to do or how many patents they collect or use against each other in their ridiculous serial patent-infringement lawsuits. Is there, I wonder, a way to come up with language or a strategy that can satisfy both camps? Or is it really a black and white question?

So, as you read the email, please pretend it is from someone you like a lot and respect, and then try to answer her points in ways you think she can accept or at least consider seriously. The first thing I'd point out to her, and all those who think they can keep the EU separate from the US system, is this article about Microsoft's call for patent "reform" in the US, which ends with this pertinent paragraph, which to me should have been the lead:

"Finally, Microsoft believes there should be increased collaboration with patent offices in other nations to help drive harmonization of the global system for patents. Collaboration should include mutual recognition by the USPTO, European and Japanese patent offices the world's three largest patent office operations."

I would hope that would help her to wake up and smell the coffee before it is too late. I see in that paragraph that there is a plan, and getting the EU to adopt software patents is just the first step.

**********************

From: Sharon Bowles

I refer to your recent email to Chris Huhne MEP. I am his senior advisor and he has asked me to reply on his behalf.

I am sorry this is a very long reply, but I hope you will get through it all. The length is necessary for a full understanding because I am afraid that most of the reporting about what this legislation covers is very wrong, as indeed is some of the commentary about the procedure. To be thorough I will cover all of these matters in this reply and I apologise if some of it repeats what you already know.

It is not quite clear why there is such a belief that it is intended to lead Europe down the US path because that battle, (such as it was) was won a long time ago and the proposed legislation both makes it clear that Europe does not intend to do the same as the US and provides a defence against further attempts to force it that way. The Liberal Democrats have always opposed any extension to the current practice, but as you will see from this reply, that is not actually what is at issue.

A full background and explanation is given below and I also attach a copy of the latest version of the proposal (the Common Position) and a PDF of an explanatory leaflet produced by the UK Patent Office. The Common Position does not change what has been established practice in the UK and Europe in recent years, which is and will continue to be more restricted than US practice. There never was an intention to allow what many have understood by the phrase 'software patents' and the Common Position now reflects this much better. The most important part of the Common Position is the Articles on pages 8 and 9 and in particular Articles 2, 4 and 4a which are all short and relatively simple.

The most recent events in the procedure of the proposed directive is that the Legal Affairs Committee asked that the directive be returned to them for another first reading rather than it coming back at this stage for second reading as would be usual. Liberal Democrats supported that request which was made so as to enable more consideration and understanding to be reached. The Commission President refused that request, fearing it might set too much of a precedent and because they wanted to make progress on the legislation. Also, on 7 March 2005, the Council finally approved the Common Position so the matter is now on its way back to the European Parliament for second reading.

The process once there is a draft Common Position (agreed through negotiation and with expert advice) is that the draft Common Position has to be passed formally by one of the Council meetings (any Council can do this, and this is what has now just been done) and then it goes back to the Parliament for a second reading where it can be amended again, accepted or refused and it will then go back to the Council.

This to and fro is rather like between the UK Commons and Lords and is the normal process with nothing getting through until both agree. It is likely that after this next Parliament/Council round the deirective will end up in the 'conciliation' procedure, where Parliament and Council representatives meet together to see if a decision can be reached, rather than always considering things separately.

In fact it makes no difference to the software industry whether the directive is passed or evetually falls, because in the absence of the directive the status quo will be maintained and the Common Position and the status quo are essentially the same. (In fact the directive is probably more restricting than the status quo by virtue of the Articles mentioned above).

The risk if it is dropped altogether is that Europe gets forced in the future, via the World Trade Organisation, to accept something that is more like the US practice, which the current directive would stave off. Now to the detail...

FULL EXPLANATION INCLUDING BACKGROUND

Background.

Patents are granted for inventions that are new, not obvious (have inventive merit) and are capable of industrial application. These may be products or processes (methods). Historically legislation has specifically excluded from patentability some fields such as mathematical methods, business methods and computer programs which at the time of their exclusion were considered entirely 'mental operations' and therefore not capable of industrial application.

The problem in recent years faced by Patent Offices and courts has been how to interpret 'computer programs'. This has become highly relevant, not just because of the increasing use of computer programs but rather more because of the nature of things that are done nowadays by computer programs.

In particular there are now substantial areas of technology where software has replaced conventional analog or digital circuits. Examples range from control of mechanical systems such as an internal combustion engine to control of packet switching in network routers, which underlies communications technology.

To be effective a patent must cover the concept as well as the detail of the invention, so although a computer program listing might be given as an example of how to perform part or all of an invention, the patent claims (the bit that defines, legally, what is covered) would not be so specific and usually relate to the method steps that are implemented in the software. (This is why relying on copyright protection in the listing is not sufficient.) So the question arose of whether the exclusion of 'computer programs' covered only listings or extended to claims to a method that is entirely put into operation through a program, i.e. is 'software or computer- implemented'.

The European Patent Office adopted the practice that a 'computer-implemented invention' was more than just a 'computer program' and was patentable when there was also a technical effect because this fulfilled the fundamental requirement that a patent be 'capable of industrial application'. This interpretation was also followed by courts in the UK and Germany and is what we have had in Europe for some years. There has been pressure from the US for wider coverage as they have. This has been resisted (not least by parts of the profession and patent offices in Europe) but does seem to have given rise to lasting fear.

More recently, some European countries expressed the opinion that their courts might take a different view on 'computer implemented inventions' and deem patents that were to a method implemented by a program (as were being granted by the European Patent Office) invalid. At this stage clarification became desirable for a variety of reasons. One of these was that if the practice of the European Patent Office were not upheld in all courts, then the same logic that caused the EPO to regard these computer-implemented inventions as patentable (by virtue of being methods capable of industrial application and belonging to a field of technology) could also be used to find against the EU in respect of its TRIPS obligations (Trade Related Intellectual Property Agreements which are part of the WTO agreements) under which patent protection for all areas of technology must be provided. The comments that were made about what courts might decide was only a theoretical breach, in that it had not actually happened, but coupled with the uncertainty that the pronouncements had made the Commission considered it would be best to confirm a uniform interpretation.

The Proposals.

The objective is to define the practice that the EPO has established as applicable in all countries. This would mean no change to the practice that the software industry has experienced in recent years in Europe and no following of wider US practice.

Unfortunately the Commission draft was not perfect in achieving the objective, and many continued to fear that a US type of patent coverage was intended as some discussion of that did take place at an earlier stage, but was rejected.

Amendments passed by the Parliament at first reading, some of which were proposed by the software industry, unintentionally made matters worse. For example the amendments included several that attempted to redefine 'industrial application' and 'technical effect' which are definitions that have been in use for decades with a substantial body of law behind them on a worldwide basis. The new definitions may have solved a problem (that was not necessarily there) for the software industry but they also had an impact on other areas of electronics, potentially excluding from patentability a range of electronic inventions, such as those implemented through processing of signal values, for which patentability had previously never been in doubt. This would have been a disaster for the European electronics and communications industries, including many SMEs, and would have left the EU in an actual rather than just a theoretical breach of its TRIPS obligations.

The draft 'Common Position' from the Council, did not include all the wording of the amendments, but has included enough to make it absolutely clear that for patentability a computer implemented invention must have a technical effect (i.e. beyond the ordinary interactions of a computer and program) and the inventive merit must relate to that technical effect.

Detail from the Common Position.

The Council Common Position specifically includes the amendment passed by the Parliament and supported by the Liberal Democrats that "In order to be patentable, a computer-implemented invention must be susceptible of industrial application and new and involve an inventive step. In order to involve an inventive step, a computer-implemented invention must make a technical contribution".

Other important parts of the Council Common Position are:

In the Directive:

• A computer program as such cannot constitute a patentable invention

• Inventions involving computer programs, whether expressed as source code, as object code or in any other form, which implement business, mathematical or other methods and do not produce any technical effects beyond the normal physical interactions between a program and the computer, network or other programmable apparatus in which it is run shall not be patentable.

  (Note: this limitation seems to exclude operating systems, as they are a normal interation, and so one of the preceived problems of interoperability is solved)

• A claim to a computer program, either on its own or on a carrier, shall not be allowed unless that program would, when loaded and executed in a computer, programmed computer network or other programmable apparatus, put into force a product or process claimed in the same patent application.

  And in the accompanying explanation:

• An algorithm is inherently non-technical and therefore cannot constitute a technical invention. Nonetheless, a method involving the use of an algorithm might be patentable provided that the method is used to solve a technical problem. However, any patent granted for such a method would not monopolise the algorithm itself or its use in contexts not foreseen in the patent.

• The mere implementation of an otherwise unpatentable method on an apparatus such as a computer is not in itself sufficient to warrant a finding that a technical contribution is present. Accordingly, a computer-implemented business method, data processing method or other method in which the only contribution to the state of the art is non-technical cannot constitute a patentable invention.

We do not yet know what amendments may be proposed when the legislation returns to the Parliament, but on balance it is probably better to accept something broadly in line with the Common Position than to amend extensively. Total rejection would be better than poor amendments again. The disadvantage of rejection is that the matter would eventually come back again and could end up worse if it is done under WTO pressure rather than now under our own volition.

Inventive merit.

In addition to what the directive actually covers, many websites on the subject have mixed in comments about particular patents (often US ones rather than European ones). US and Europe must not be mixed up, we have different laws. Unfortunately even in Europe mistakes are sometimes made about granting patents for something that turns out to be trivial (often these mistakes are made at an early stage of new practice and before oppositions and challenges in courts provide better limitations). There are remedies for this, the problem is by no means unique to this area of technology, and it should not be used to confuse the actual issues. In general the European Patent Office aims to keep the level of inventive merit high, and would more certainly be more careful if the directive is passed given both the new conditions and the review provisions in the directive.

Inter-operability

One matter that some consider is not resolved is that of inter-operability. Article 4a2, that excludes patents that are just the normal interaction of a computer and program, may well go some way to assisting in this by seeming to exclude patentability for operating systems (a normal interaction?). However, the problem actually arises not from patents but from copyright. There is a similar design copyright problem concerning 'must-fit designs', e.g. allowing spare parts for cars to be made by anyone, and at present the correct wording to enable that is still being sought. As the computer inter-operability problem is mainly the result of copyright (and will be more so if the directive is passed) I have recently proposed via the UK Patent Office that perhaps the spare parts and inter-operability point could be considered together.

I am sorry this is so long, but I do hope that you have found it informative. Please do contact me again if you require any further information.

Yours sincerely

Sharon Bowles
Senior Advisor to Chris Huhne MEP