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ESP's brief for EPO referral G3-08

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(regarding this referral: EPO EBA referral G3-08)

G3/08 Amicus curiae brief

Dear Sirs,

End Software Patents (“ESP”), is a worldwide campaign to abolish software patents. Its primary funder is Free Software Foundation (USA based), and its Executive Director is Ciaran O'Riordan (Europe based). Drawing on years of work on

the EU Directive on the patentability of computer-implemented inventions, the 'in re Bilski' court case in the USA, analysis of the market costs of software patents in the USA, compiling existing documentation on the case against software patents

ESP respectfully submits the following comments on referral G3/08.


Having read the G3/08 amicus curiae briefs on available on http://www.epo.org as of the morning of April 29th, we will try to minimise repetition. Further down, we offer our answers to the questions of the referral along with explanations of why our policies are linguistically and legally logical. Before that, we offer a few notes to highlight why we feel our policy of abolishing software patents leads to a sensible outcome for Europe.

General economic cost A report compiled by Ben Klemens, commissioned by ESP, estimated the cost of software patent litigation in the USA to be $11.2 billion as of February 2008. As well as highlighting the cost to the economy, this figure highlights the seriousness of this issue, deserving better, clearer legislation. http://endsoftpatents.org/2008-state-of-softpatents

Europe's SME-based economy The 2004 report from PriceWaterhouseCoopers, “Rethinking the European ICT Agenda,” noted that “A software patent, which serves to protect inventions of a non-technical nature, could kill the high innovation rate. [...] most small enterprises are strongly opposed.”

The 2004 report from Deutsche Bank Research, “Innovation in Germany, Windows of opportunity,” which recommended: “The German government is among the tentative critics of the EU software patent bill. This position should be bolstered, by (1) putting forward academic evidence and (2) making SMEs’ concerns heard. SMEs are crucial providers of pathbreaking innovations, but would be most adversely affected by patentability.” http://www.dbresearch.com/PROD/DBR_INTERNET_EN-PROD/PROD0000000000175949.pdf

Infringement is expensive and unavoidable Looking for an example of a software company who should have the best chances to avoid software patents, Microsoft is a good candidate. They have some of the largest financial and legal resources in the world, and they are a supporter of software patents – so we can assume they make a good faith effort to abide by the patent system.

However, last month they were first ordered to pay $388 million to Uniloc for infringement of software patents, and later that month Microsoft was part of a group of fourteen companies forced to settle with CSIRO for an undisclosed amount in a case which has been estimated at a combined total of $1 billion.

Uniloc: http://www.businessweek.com/ap/financialnews/D97EI6981.htm CSIRO: http://www.thetechherald.com/article.php/200917/3520/Australia-s-CSIRO-wins-big-Wi-Fi-patent-battle

Answers Question 1 “1. Can a computer program only be excluded as a computer program as such if it is explicity claimed as a computer program?”

No. The EPC's exclusion of computer programs does not make any mention about being limited to any category or form of application.

Question 2a “2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicity mentioning the use of a computer or a computer-readable data storage medium?”

No. Use with a computer, and thus storage on a computer-readable data medium, is part of the essential existence and inherent purpose of all computer programs and thus would not change the nature of a claim.

Question 2b “(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?”

2(a) talks of claims in the area of computer programs. Computer programs are, rightly, excluded from patentability by EPC Art.52. There is therefore no scope to talk about how claims in the area of computer programs can avoid the fact that computer programs are excluded, via “further technical effects” or any other manner. It seems also illogical to talk about how about claims in the area of computer programs can avoid the exclusion of computer programs. To avoid exclusion from patentability, a claim must contain an innovation in an area that is patentable subject matter.

In particular, the inputs and outputs of a computer program – without which it would serve no purpose – must not be allowed constitute “further technical effects”.

Question 3a “3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?”

This requirement is insufficient because it would rely too heavily on the nature of how a feature can “cause” an effect. Also, it is the domain of the innovation, rather than the domain of the result or effect, which decides whether a feature contributes to technical character.

If a product developer invents a new way to cure rubber, he should be able to apply for a patent on curing rubber. His invention might contain many non-patentable things, including computer programs, but these wouldn't have any positive or negative influence on the patentability of his rubber curing innovation. If a patent is granted for rubber curing, it should be of concern to others who are involved in curing rubber. It should not be of concern to people engaged in development of non-patentable products similar to the non-patentable elements of the rubber curing patent.

Question 3b “(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?”

No. That would make it trivial to circumvent the exclusions of EPC Art.52.

Question 3c “(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?”

No. That would make it trivial to circumvent the exclusions of EPC Art.52.

Question 4a “4.(a) Does the activity of programming a computer necessarily involve technical considerations?”

No. The EPC, in compliance with TRIPS, allows patents in all fields of technology. The EPC excludes “discoveries, scientific theories and mathematical methods” from patentability, as well as “aesthetic creations”. Development of software requires considerations which are sometimes similar to development of mathematical methods, sometimes similar to development of symphonies, and at other times similar to writing a novel. That none of those three domains fall within the EPC's definition of “technical” is confirmation that development of software does not require technical considerations.

Question 4b “(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?”


Question 4c

“(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?”

No features resulting from programming cannot contribute to there being a technical character in a claim.