One might be forgiven for thinking that the software patents controversy had died once the European Commission decided, in response to an adverse vote from the European Parliament, to abandon its proposal for a computer implemented inventions directive in July 2005. Not so. The controversy goes on, but in different contexts and in different places.
The proposed directive sought to harmonize throughout Europe the approach to interpreting the express exclusion from patentability in European patent laws for computer programs.
In the absence of such harmonization, patents which would have been subject to the measure continue to be granted by the European Patent Office (EPO) and by national patent offices throughout Europe.
Some such patents get to be considered by national courts in Europe. One of the first judgments in such a case after the directive was dropped was that of the English Patents Court, in Halliburton v Smith.
This was also the first judgment given by an English court on a software patentability issue in the context of a fully contested patent infringement action between commercial rivals, as opposed to one on an appeal from a UK Patent Office (UKPO) rejection.
At first sight the dispute seems to have little to do with software, but it demonstrates the pervasive nature of software in all modern technology. The dispute concerned oil drilling bits, but drilling bits that were designed in accordance with a computer program.
Although the judge also found these particular claims invalid for a variety of other reasons, he held that claims to the computerized design process might survive attack on the grounds of being a mere computer program (and thus excluded from patentability) if they were recast so as to include within their wording the drill bit so designed.
In his view 'the contribution the invention makes must lie in technical effect and not merely in excluded subject matter [such as a computer program]' but considered that a patent claim whose contribution was merely in excluded subject matter could be rendered patentable by adding an industrial step, such as in this case making the drill bit.
But most cases on such patents heard by the English courts are appeals from refusals of the UKPO, which has taken a much tougher line on such matters than the EPO, to grant such patents.
Patents granted by the EPO (the route by which the vast majority of patents in force in the UK get granted) only get seen by the English courts in the course of fully contested disputes, such as Halliburton v Smith.
However, the loss of the proposed directive has given the English courts the impetus to try to develop a consistent approach to excluded subject matter, such as computer programs and business methods.
Differing judges, in several appeals that have got to the Patents Court in the last year, have been refining their views on the point.
The matter is now set to go further, with the Court of Appeal having agreed to take an appeal in Macrossan's application against a decision upholding the UKPO refusal to grant a patent on, amongst other grounds, that it related to a computer program as such.
The patent application claims a web-based system for automatically generating the documents needed to incorporate a company, and in agreeing in June 2006 to hear the matter the Court of Appeal has observed that the patent applicant's arguments have a real prospect of success. And that 'the exclusions are of public interest, sufficiently uncertain and thus worthy of consideration by the Court of Appeal'.
We can thus expect some authoritative guidance from the Court of Appeal early in 2007.
Further afield, and unabashed at the computer implemented inventions directive debacle, the European Commission has two proposals afoot that could impact the software patent issue. One is its proposal for a unitary community patent, which when granted would have effect throughout all of Europe.
Although the proposal does not address the substantive law of patents, and thus matters such as the exclusions from patentability, it would involve establishing a single Community Patents Court whose pronouncements on such matters would then become authoritative across the Community in a way that those of even the EPO at present are not.
In January 2006 the Commission launched a consultation about the future of the patent system in Europe generally, and it remains to be seen whether in the light of that it will persist in pressing ahead further with its proposal for a Community patent with its ridiculously costly language regime, which industry opposes.
The hope of many is that it will instead remove its block on the European Patent Litigation Agreement (EPLA), allowing patents granted by the EPO to be litigated in one national court but with effect in multiple jurisdictions.
The other Commission proposal, which saw little advance consultation, is already far advanced, and will, if it passes in its present form, have a major impact on patent enforcement in the UK. This proposal would seek to harmonize criminal penalties throughout Europe for intellectual property infringement.
In the UK however its effect would be to mandate the introduction of criminal penalties for infringement of intellectual property rights for which there have never been criminal penalties before – most notably patents.
At present we are fortunate to have in our English Patents Court specialized judges with a technical background who are steeped in a lifetime of patent law.
They will not have the wool pulled over their eyes on a technically obvious patent just because a determined applicant has bludgeoned a patent office official (more often, it has to be said, in the EPO than in the UKPO) into granting it.
Patents in the UK in the hands of scores of non-specialist criminal law judges with no technical background could be a very dangerous instrument of oppression in the hands of unscrupulous patentees, and especially so for many of the trivial inventions that masquerade as computer implemented inventions.
Even more potentially alarming, for companies based in Europe, are the increasingly long arms of the US courts when looking at patent infringement issues.
The Blackberry controversy that ended early in 2006 with RIM, the Canadian company behind the Blackberry, buying off NTP, the 'patent troll' that had assailed it, didn’t only involve patents the validity of which was being seriously questioned by the US Patent and Trade Mark Office.
It also involved was a theory of infringement that meant that US patents and US patent law could be applied even though most of the components crucial to the system’s operation were located outside the USA, in this case Canada.
It does not require too much imagination to foresee an expansive view of their jurisdiction by the US courts leading to attempts to assert US computer program and business method patents against internet based systems operating out of Europe, which would certainly stoke the embers of the fires of the computer implemented inventions and business method patent controversy in Europe.
In a nutshell
- In the absence of harmonization, patents which would have been subject to the proposed computer implemented inventions directive continue to be granted by the EPO.
- One of the first judgments in such a case after the directive was dropped was that of the English Patents Court in Halliburton v Smith.
- Most cases on such patents heard by the English courts are appeals from refusals of the UKPO, which has taken a much tougher line on such matters than the EPO.
- We can expect some authoritative guidance from the Court of Appeal early in 2007.
- The European Commission has two proposals afoot that could impact the issue: one for a unitary community patent, the other to harmonize criminal penalties in Europe for intellectual property infringement.