A reader sent me an email he received after he wrote to his MEP, Chris Huhne, in the UK. Huhne's Senior Advisor, Sharon Bowles, of Bowles Horton, an EU patent and trademark legal firm, responded. It didn't escape my notice that Mr. Huhne's senior advisor is with a patent firm, one whose clients, they say on the website, include "some of the major leaders in R & D in various electronics fields throughout the world", but let's set that aside for the moment and let her speak.
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.
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
and a PDF of an explanatory leaflet produced by the UK Patent
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
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
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
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
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
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
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
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
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
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
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
Other important parts of the Council Common Position are:
In the Directive:
A computer program as such cannot constitute a patentable
- 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.
In addition to what the directive actually covers, many websites on
the subject have mixed in comments about particular patents (often
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.
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.
Senior Advisor to Chris Huhne MEP