Dispute over the meaning of "Invention" in Art. 52(2) EPC - The patentability of computer-implemented inventions in Europe

IIC International Review of Intellectual Property and Competition Law

Volumn 36, Issue 2, 2005, Pages 173-191

  Pila, Justine ^a  

^a UNIVERSITY OF OXFORD   (United Kingdom)

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EID: 17044398225     PISSN: 00189855     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (144)

1. Convention on the Grant of European Patents, opened for signature 5 October 1973, 13 ILM 268 (entered into force 7 October 1977) ("EPC").
2. Opinion of the Economic and Social Committee on the Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions ("ESC Opinion"), COM(2002) 92 final-2002/0047(COD) (19 September 2002) [3.1].
3. "Commission Proposal", COM(2002) 92 final (20 February 2002).
4. Art. 52(1) EPC: "European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step."
5. Art. 52(2) EPC: "The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information."
6. Art. 52(3) EPC: "The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such" (emphasis added).
7. The difficult nature of the history of EPO jurisprudence is implicit in the uncertainty regarding the principles it supports, which has been widely acknowledged by academics, governments, and even judges. In the context of UK law see, e.g., Gale's Application [1991] RPC 317, 328 (CA) (Nicholls LJ) (referring to the decisions in T115/85 (IBM/Computer-Related Invention) [1990] EPOR 107 and T6/83 (IBM/Data Processor Network) [1990] EPOR 91, and stating: "I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose. That, at least to some extent, may well be no more than a reflection of my lack of expertise in this technical field."); Hitachi Ltd's Application [1991] RPC 415, 422 (Patent Office) (describing the identification of an "invention" as a matter of expert tuition); United Kingdom Patent Office, "Should Patents be Granted for Computer Software or Ways of Doing Business? The Government's Conclusions" (March 2001) (available at 〈http://www.patent.gov.uk/about/consultations/conclusions.htm〉) [20] (last visited 7 July 2004) (agreeing with public statements that the law regarding the availability of patents for computer programs is unclear, and undertaking "as a matter of urgency" to "take this matter up with its partners in the European Union and the European Patent Convention"). See further below.
8. The difficult nature of the history of EPO jurisprudence is implicit in the uncertainty regarding the principles it supports, which has been widely acknowledged by academics, governments, and even judges. In the context of UK law see, e.g., Gale's Application [1991] RPC 317, 328 (CA) (Nicholls LJ) (referring to the decisions in T115/85 (IBM/Computer-Related Invention) [1990] EPOR 107 and T6/83 (IBM/Data Processor Network) [1990] EPOR 91, and stating: "I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose. That, at least to some extent, may well be no more than a reflection of my lack of expertise in this technical field."); Hitachi Ltd's Application [1991] RPC 415, 422 (Patent Office) (describing the identification of an "invention" as a matter of expert tuition); United Kingdom Patent Office, "Should Patents be Granted for Computer Software or Ways of Doing Business? The Government's Conclusions" (March 2001) (available at 〈http://www.patent.gov.uk/about/consultations/conclusions.htm〉) [20] (last visited 7 July 2004) (agreeing with public statements that the law regarding the availability of patents for computer programs is unclear, and undertaking "as a matter of urgency" to "take this matter up with its partners in the European Union and the European Patent Convention"). See further below.
9. The difficult nature of the history of EPO jurisprudence is implicit in the uncertainty regarding the principles it supports, which has been widely acknowledged by academics, governments, and even judges. In the context of UK law see, e.g., Gale's Application [1991] RPC 317, 328 (CA) (Nicholls LJ) (referring to the decisions in T115/85 (IBM/Computer-Related Invention) [1990] EPOR 107 and T6/83 (IBM/Data Processor Network) [1990] EPOR 91, and stating: "I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose. That, at least to some extent, may well be no more than a reflection of my lack of expertise in this technical field."); Hitachi Ltd's Application [1991] RPC 415, 422 (Patent Office) (describing the identification of an "invention" as a matter of expert tuition); United Kingdom Patent Office, "Should Patents be Granted for Computer Software or Ways of Doing Business? The Government's Conclusions" (March 2001) (available at 〈http://www.patent.gov.uk/about/consultations/conclusions.htm〉) [20] (last visited 7 July 2004) (agreeing with public statements that the law regarding the availability of patents for computer programs is unclear, and undertaking "as a matter of urgency" to "take this matter up with its partners in the European Union and the European Patent Convention"). See further below.
10. The difficult nature of the history of EPO jurisprudence is implicit in the uncertainty regarding the principles it supports, which has been widely acknowledged by academics, governments, and even judges. In the context of UK law see, e.g., Gale's Application [1991] RPC 317, 328 (CA) (Nicholls LJ) (referring to the decisions in T115/85 (IBM/Computer-Related Invention) [1990] EPOR 107 and T6/83 (IBM/Data Processor Network) [1990] EPOR 91, and stating: "I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose. That, at least to some extent, may well be no more than a reflection of my lack of expertise in this technical field."); Hitachi Ltd's Application [1991] RPC 415, 422 (Patent Office) (describing the identification of an "invention" as a matter of expert tuition); United Kingdom Patent Office, "Should Patents be Granted for Computer Software or Ways of Doing Business? The Government's Conclusions" (March 2001) (available at 〈http://www.patent.gov.uk/about/consultations/conclusions.htm〉) [20] (last visited 7 July 2004) (agreeing with public statements that the law regarding the availability of patents for computer programs is unclear, and undertaking "as a matter of urgency" to "take this matter up with its partners in the European Union and the European Patent Convention"). See further below.
11. T16/83 - Christian Franceries/Traffic Regulation ("Christian Franceries") [1988] EPOR 65.
12. T51/84 - Stockburger/Coded Distinctive Mark ("Stockburger") [1986] EPOR 229.
13. T208/84 - VICOM/Computer-Related Invention ("Vicom") [1987] EPOR 74, 18 IIC 101 (1987).
14. T26/86 - Koch & Sterzel/X-Ray Apparatus (Opp by Siemens & Phillips) ("Koch") [1988] EPOR 72, 19 IIC 531 (1988).
15. T366/87 - Sternheimer/Harmonic Vibrations ("Sternheimer") [1989] EPOR 131.
16. T115/85 - IBM/Computer-Related Invention ("IBM/CRI") [1990] EPOR 107, 21 IIC 354 (1990).
17. Cf. Christian Franceries [1988] EPOR 65, [8], [10] (interpreting Art. 52(2) as requiring a subject matter that does not implement or comprise an abstract activity or other item excluded by Art. 52(2)).
18. See Stockburger [1986] EPOR 229, [3]; IBM/CRI [1990] EPOR 107, [9], [11]; Sternheimer [1989] Epor 131, [4].
19. See Stockburger [1986] EPOR 229, [3]; IBM/CRI [1990] EPOR 107, [9], [11]; Sternheimer [1989] Epor 131, [4].
20. See Stockburger [1986] EPOR 229, [3]; IBM/CRI [1990] EPOR 107, [9], [11]; Sternheimer [1989] Epor 131, [4].
21. See Christian Franceries [1988] EPOR 65, [5], [11]; Koch [1988] EPOR 72, [3.4]; Vicom [1987] EPOR 74, [16].
22. See Christian Franceries [1988] EPOR 65, [5], [11]; Koch [1988] EPOR 72, [3.4]; Vicom [1987] EPOR 74, [16].
23. See Christian Franceries [1988] EPOR 65, [5], [11]; Koch [1988] EPOR 72, [3.4]; Vicom [1987] EPOR 74, [16].
24. See Christian Franceries [1988] EPOR 65, [10]; Vicom [1987] EPOR 74, [3], [6], [7].
25. See Christian Franceries [1988] EPOR 65, [10]; Vicom [1987] EPOR 74, [3], [6], [7].
26. See IBM/CRI [1990] EPOR 107, [5], [9], [13]; Sternheimer [1989] EPOR 131, [4.1], [4.3].
27. See IBM/CRI [1990] EPOR 107, [5], [9], [13]; Sternheimer [1989] EPOR 131, [4.1], [4.3].
28. See Koch [1988] EPOR 72, [3.4].
29. See Vicom [1987] EPOR 74, [5].
30. See IBM/CRI [1990] EPOR 107, [9].
31. See Stockburger [1986] EPOR 229, [3]; Sternheimer [1989] EPOR 131, [4].
32. See Stockburger [1986] EPOR 229, [3]; Sternheimer [1989] EPOR 131, [4].
33. See BRAD SHERMAN, "The Patentability of Computer-Related Inventions in the United Kingdom and the European Patent Office", 1991 European Intellectual Property Review 85, 85 (citing the decisions of the EPO in Vicom [1987] EPOR 74 and Koch [1988] EPOR 72 as reflecting a "whole contents approach" to Art. 52(2), defined expansively to encompass any approach to Art. 52(2) involving an examination of "the claims as a whole" as distinct from their "novel or non-excluded elements"). See also JONATHAN NEWMAN, "The Patentability of Computer-Related Inventions in Europe", 1997 European Intellectual Property Review 701, 702 (distinguishing between Sherman's whole contents approach and a "pure whole contents approach", described as "looking at the alleged invention as a whole and assessing whether the whole involves more than excluded matter").
34. See BRAD SHERMAN, "The Patentability of Computer-Related Inventions in the United Kingdom and the European Patent Office", 1991 European Intellectual Property Review 85, 85 (citing the decisions of the EPO in Vicom [1987] EPOR 74 and Koch [1988] EPOR 72 as reflecting a "whole contents approach" to Art. 52(2), defined expansively to encompass any approach to Art. 52(2) involving an examination of "the claims as a whole" as distinct from their "novel or non-excluded elements"). See also JONATHAN NEWMAN, "The Patentability of Computer-Related Inventions in Europe", 1997 European Intellectual Property Review 701, 702 (distinguishing between Sherman's whole contents approach and a "pure whole contents approach", described as "looking at the alleged invention as a whole and assessing whether the whole involves more than excluded matter").
35. Compare the "point of novelty approach" identified by Sherman in the decision of Falconer J in Merrill Lynch Inc's Application [1988] RPC 1 and certain U.S. cases, as consisting of "the idea that, when the court is determining whether an invention falls within one of the excluded categories, only the novel or inventive elements of the invention are to be examined". See SHERMAN, supra note 23, at 85. See also NEWMAN, supra note 23, at 702.
36. Compare the "point of novelty approach" identified by Sherman in the decision of Falconer J in Merrill Lynch Inc's Application [1988] RPC 1 and certain U.S. cases, as consisting of "the idea that, when the court is determining whether an invention falls within one of the excluded categories, only the novel or inventive elements of the invention are to be examined". See SHERMAN, supra note 23, at 85. See also NEWMAN, supra note 23, at 702.
37. Compare the "point of novelty approach" identified by Sherman in the decision of Falconer J in Merrill Lynch Inc's Application [1988] RPC 1 and certain U.S. cases, as consisting of "the idea that, when the court is determining whether an invention falls within one of the excluded categories, only the novel or inventive elements of the invention are to be examined". See SHERMAN, supra note 23, at 85. See also NEWMAN, supra note 23, at 702.
38. See, e.g., T 22/85 - IBM/Document Abstracting and Retrieving ("IBM/DA&R") [1990] EPOR 98, 21 IIC 358 (1990); T 38/86 - IBM/Text Clarity Processing ("IBM/TCP") [1990] EPOR 606; T 158/88 - Siemens/Character Form ("Siemens") [1992] EPOR 69; T 833/91 - IBM/External Interface Simulation ("IBM/EIS") [1998] EPOR 431; T 204/93 -AT&T/Computer System ("AT&T") [2001] EPOR 300. For a description of these cases see Appendix.
39. See, e.g., T 22/85 - IBM/Document Abstracting and Retrieving ("IBM/DA&R") [1990] EPOR 98, 21 IIC 358 (1990); T 38/86 - IBM/Text Clarity Processing ("IBM/TCP") [1990] EPOR 606; T 158/88 - Siemens/Character Form ("Siemens") [1992] EPOR 69; T 833/91 - IBM/External Interface Simulation ("IBM/EIS") [1998] EPOR 431; T 204/93 -AT&T/Computer System ("AT&T") [2001] EPOR 300. For a description of these cases see Appendix.
40. See, e.g., T 22/85 - IBM/Document Abstracting and Retrieving ("IBM/DA&R") [1990] EPOR 98, 21 IIC 358 (1990); T 38/86 - IBM/Text Clarity Processing ("IBM/TCP") [1990] EPOR 606; T 158/88 - Siemens/Character Form ("Siemens") [1992] EPOR 69; T 833/91 - IBM/External Interface Simulation ("IBM/EIS") [1998] EPOR 431; T 204/93 -AT&T/Computer System ("AT&T") [2001] EPOR 300. For a description of these cases see Appendix.
41. See, e.g., T 22/85 - IBM/Document Abstracting and Retrieving ("IBM/DA&R") [1990] EPOR 98, 21 IIC 358 (1990); T 38/86 - IBM/Text Clarity Processing ("IBM/TCP") [1990] EPOR 606; T 158/88 - Siemens/Character Form ("Siemens") [1992] EPOR 69; T 833/91 - IBM/External Interface Simulation ("IBM/EIS") [1998] EPOR 431; T 204/93 -AT&T/Computer System ("AT&T") [2001] EPOR 300. For a description of these cases see Appendix.
42. See, e.g., T 22/85 - IBM/Document Abstracting and Retrieving ("IBM/DA&R") [1990] EPOR 98, 21 IIC 358 (1990); T 38/86 - IBM/Text Clarity Processing ("IBM/TCP") [1990] EPOR 606; T 158/88 - Siemens/Character Form ("Siemens") [1992] EPOR 69; T 833/91 - IBM/External Interface Simulation ("IBM/EIS") [1998] EPOR 431; T 204/93 -AT&T/Computer System ("AT&T") [2001] EPOR 300. For a description of these cases see Appendix.
43. See, e.g., T 52/85 - IBM/Semantically-Related Expressions ("IBM/SRE") [1989] EPOR 454; T 65/86 - IBM/Homophone Checker ("IBM/HC") [1990] EPOR 181. For a description of these cases see Appendix.
44. See, e.g., T 52/85 - IBM/Semantically-Related Expressions ("IBM/SRE") [1989] EPOR 454; T 65/86 - IBM/Homophone Checker ("IBM/HC") [1990] EPOR 181. For a description of these cases see Appendix.
45. See, e.g., IBM/DA&R [1990] EPOR 98; IBM/TCP [1990] EPOR 606. For a description of these cases see Appendix.
46. See, e.g., IBM/DA&R [1990] EPOR 98; IBM/TCP [1990] EPOR 606. For a description of these cases see Appendix.
47. See, e.g., IBM/SRE [1989] EPOR 454; Siemens [1992] EPOR 69; AT&T [2001] EPOR 300; IBM/HC [1990] EPOR 181. For a description of these cases see Appendix.
48. See, e.g., IBM/SRE [1989] EPOR 454; Siemens [1992] EPOR 69; AT&T [2001] EPOR 300; IBM/HC [1990] EPOR 181. For a description of these cases see Appendix.
49. See, e.g., IBM/SRE [1989] EPOR 454; Siemens [1992] EPOR 69; AT&T [2001] EPOR 300; IBM/HC [1990] EPOR 181. For a description of these cases see Appendix.
50. See, e.g., IBM/SRE [1989] EPOR 454; Siemens [1992] EPOR 69; AT&T [2001] EPOR 300; IBM/HC [1990] EPOR 181. For a description of these cases see Appendix.
51. See, e.g., T 42/87 - Kearney/Computer-Related Invention ("Kearney") [1997] EPOR 236 (reasoning analogously from IBM/CRI [1990] EPOR 107 to support the patenting of a method for communicating messages relating to the operation of a tool to its human operator); T 164/92 - Bosch/Electronic Computer Components ("Bosch") [1995] EPOR 585 (finding a system for monitoring computer components to be inherently patentable on the basis of its technical effect in reducing the computer's operating speed); T 59/93 - IBM/Rotating Displayed Objects ("IBM/RDO") (Unreported, Technical Board of Appeal, 20 April 1994) (adopting a formalistic view of Art. 52(2) to support the patenting of a method of rotating digital objects, on the basis of its effect in enabling the programmer to perform a more accurate rotation); T 6/83 - IBM/Data Processor Network ("IBM/DPN") [1990] EPOR 91 (applying the language of the contribution theory to support the patenting of a technically conventional system for networking data processors by means of a computer program); T 110/90 - IBM/Editable Document Form ("IBM/EDF") [1995] EPOR 185 (applying the language of the contribution theory to support the patenting of a system for converting documents from one word processing system to another on the basis of the system's dependence on the technical features of the word processing systems and inability to be performed exclusively by mental means); T 236/91 - Texas Instruments/Language Understanding System ("Texas Instruments") [2000] EPOR 156 (finding a system for helping computer operators input words by selecting and entering words and phrases from menus generated and presented by the computer according to the operator's input to be inherently patentable, on the basis of its use of various technical features, including pre-defined menus and the inputting of commands to trigger their execution); T 769/92 - Sohei/General-Purpose Management System) ("Sohei") [1996] EPO 253, 27 IIC 373 (1996) (finding a system for management models to be inherently patentable on the basis of its dependence for implementation on the operator's technical judgment in making certain preliminary decisions beyond those involved in conventional acts of programming).
52. See, e.g., T 42/87 - Kearney/Computer-Related Invention ("Kearney") [1997] EPOR 236 (reasoning analogously from IBM/CRI [1990] EPOR 107 to support the patenting of a method for communicating messages relating to the operation of a tool to its human operator); T 164/92 - Bosch/Electronic Computer Components ("Bosch") [1995] EPOR 585 (finding a system for monitoring computer components to be inherently patentable on the basis of its technical effect in reducing the computer's operating speed); T 59/93 - IBM/Rotating Displayed Objects ("IBM/RDO") (Unreported, Technical Board of Appeal, 20 April 1994) (adopting a formalistic view of Art. 52(2) to support the patenting of a method of rotating digital objects, on the basis of its effect in enabling the programmer to perform a more accurate rotation); T 6/83 - IBM/Data Processor Network ("IBM/DPN") [1990] EPOR 91 (applying the language of the contribution theory to support the patenting of a technically conventional system for networking data processors by means of a computer program); T 110/90 - IBM/Editable Document Form ("IBM/EDF") [1995] EPOR 185 (applying the language of the contribution theory to support the patenting of a system for converting documents from one word processing system to another on the basis of the system's dependence on the technical features of the word processing systems and inability to be performed exclusively by mental means); T 236/91 - Texas Instruments/Language Understanding System ("Texas Instruments") [2000] EPOR 156 (finding a system for helping computer operators input words by selecting and entering words and phrases from menus generated and presented by the computer according to the operator's input to be inherently patentable, on the basis of its use of various technical features, including pre-defined menus and the inputting of commands to trigger their execution); T 769/92 - Sohei/General-Purpose Management System) ("Sohei") [1996] EPO 253, 27 IIC 373 (1996) (finding a system for management models to be inherently patentable on the basis of its dependence for implementation on the operator's technical judgment in making certain preliminary decisions beyond those involved in conventional acts of programming).
53. See, e.g., T 42/87 - Kearney/Computer-Related Invention ("Kearney") [1997] EPOR 236 (reasoning analogously from IBM/CRI [1990] EPOR 107 to support the patenting of a method for communicating messages relating to the operation of a tool to its human operator); T 164/92 - Bosch/Electronic Computer Components ("Bosch") [1995] EPOR 585 (finding a system for monitoring computer components to be inherently patentable on the basis of its technical effect in reducing the computer's operating speed); T 59/93 - IBM/Rotating Displayed Objects ("IBM/RDO") (Unreported, Technical Board of Appeal, 20 April 1994) (adopting a formalistic view of Art. 52(2) to support the patenting of a method of rotating digital objects, on the basis of its effect in enabling the programmer to perform a more accurate rotation); T 6/83 - IBM/Data Processor Network ("IBM/DPN") [1990] EPOR 91 (applying the language of the contribution theory to support the patenting of a technically conventional system for networking data processors by means of a computer program); T 110/90 - IBM/Editable Document Form ("IBM/EDF") [1995] EPOR 185 (applying the language of the contribution theory to support the patenting of a system for converting documents from one word processing system to another on the basis of the system's dependence on the technical features of the word processing systems and inability to be performed exclusively by mental means); T 236/91 - Texas Instruments/Language Understanding System ("Texas Instruments") [2000] EPOR 156 (finding a system for helping computer operators input words by selecting and entering words and phrases from menus generated and presented by the computer according to the operator's input to be inherently patentable, on the basis of its use of various technical features, including pre-defined menus and the inputting of commands to trigger their execution); T 769/92 - Sohei/General-Purpose Management System) ("Sohei") [1996] EPO 253, 27 IIC 373 (1996) (finding a system for management models to be inherently patentable on the basis of its dependence for implementation on the operator's technical judgment in making certain preliminary decisions beyond those involved in conventional acts of programming).
54. See, e.g., T 42/87 - Kearney/Computer-Related Invention ("Kearney") [1997] EPOR 236 (reasoning analogously from IBM/CRI [1990] EPOR 107 to support the patenting of a method for communicating messages relating to the operation of a tool to its human operator); T 164/92 - Bosch/Electronic Computer Components ("Bosch") [1995] EPOR 585 (finding a system for monitoring computer components to be inherently patentable on the basis of its technical effect in reducing the computer's operating speed); T 59/93 - IBM/Rotating Displayed Objects ("IBM/RDO") (Unreported, Technical Board of Appeal, 20 April 1994) (adopting a formalistic view of Art. 52(2) to support the patenting of a method of rotating digital objects, on the basis of its effect in enabling the programmer to perform a more accurate rotation); T 6/83 - IBM/Data Processor Network ("IBM/DPN") [1990] EPOR 91 (applying the language of the contribution theory to support the patenting of a technically conventional system for networking data processors by means of a computer program); T 110/90 - IBM/Editable Document Form ("IBM/EDF") [1995] EPOR 185 (applying the language of the contribution theory to support the patenting of a system for converting documents from one word processing system to another on the basis of the system's dependence on the technical features of the word processing systems and inability to be performed exclusively by mental means); T 236/91 - Texas Instruments/Language Understanding System ("Texas Instruments") [2000] EPOR 156 (finding a system for helping computer operators input words by selecting and entering words and phrases from menus generated and presented by the computer according to the operator's input to be inherently patentable, on the basis of its use of various technical features, including pre-defined menus and the inputting of commands to trigger their execution); T 769/92 - Sohei/General-Purpose Management System) ("Sohei") [1996] EPO 253, 27 IIC 373 (1996) (finding a system for management models to be inherently patentable on the basis of its dependence for implementation on the operator's technical judgment in making certain preliminary decisions beyond those involved in conventional acts of programming).
55. See, e.g., T 42/87 - Kearney/Computer-Related Invention ("Kearney") [1997] EPOR 236 (reasoning analogously from IBM/CRI [1990] EPOR 107 to support the patenting of a method for communicating messages relating to the operation of a tool to its human operator); T 164/92 - Bosch/Electronic Computer Components ("Bosch") [1995] EPOR 585 (finding a system for monitoring computer components to be inherently patentable on the basis of its technical effect in reducing the computer's operating speed); T 59/93 - IBM/Rotating Displayed Objects ("IBM/RDO") (Unreported, Technical Board of Appeal, 20 April 1994) (adopting a formalistic view of Art. 52(2) to support the patenting of a method of rotating digital objects, on the basis of its effect in enabling the programmer to perform a more accurate rotation); T 6/83 - IBM/Data Processor Network ("IBM/DPN") [1990] EPOR 91 (applying the language of the contribution theory to support the patenting of a technically conventional system for networking data processors by means of a computer program); T 110/90 - IBM/Editable Document Form ("IBM/EDF") [1995] EPOR 185 (applying the language of the contribution theory to support the patenting of a system for converting documents from one word processing system to another on the basis of the system's dependence on the technical features of the word processing systems and inability to be performed exclusively by mental means); T 236/91 - Texas Instruments/Language Understanding System ("Texas Instruments") [2000] EPOR 156 (finding a system for helping computer operators input words by selecting and entering words and phrases from menus generated and presented by the computer according to the operator's input to be inherently patentable, on the basis of its use of various technical features, including pre-defined menus and the inputting of commands to trigger their execution); T 769/92 - Sohei/General-Purpose Management System) ("Sohei") [1996] EPO 253, 27 IIC 373 (1996) (finding a system for management models to be inherently patentable on the basis of its dependence for implementation on the operator's technical judgment in making certain preliminary decisions beyond those involved in conventional acts of programming).
56. See, e.g., T 42/87 - Kearney/Computer-Related Invention ("Kearney") [1997] EPOR 236 (reasoning analogously from IBM/CRI [1990] EPOR 107 to support the patenting of a method for communicating messages relating to the operation of a tool to its human operator); T 164/92 - Bosch/Electronic Computer Components ("Bosch") [1995] EPOR 585 (finding a system for monitoring computer components to be inherently patentable on the basis of its technical effect in reducing the computer's operating speed); T 59/93 - IBM/Rotating Displayed Objects ("IBM/RDO") (Unreported, Technical Board of Appeal, 20 April 1994) (adopting a formalistic view of Art. 52(2) to support the patenting of a method of rotating digital objects, on the basis of its effect in enabling the programmer to perform a more accurate rotation); T 6/83 - IBM/Data Processor Network ("IBM/DPN") [1990] EPOR 91 (applying the language of the contribution theory to support the patenting of a technically conventional system for networking data processors by means of a computer program); T 110/90 - IBM/Editable Document Form ("IBM/EDF") [1995] EPOR 185 (applying the language of the contribution theory to support the patenting of a system for converting documents from one word processing system to another on the basis of the system's dependence on the technical features of the word processing systems and inability to be performed exclusively by mental means); T 236/91 - Texas Instruments/Language Understanding System ("Texas Instruments") [2000] EPOR 156 (finding a system for helping computer operators input words by selecting and entering words and phrases from menus generated and presented by the computer according to the operator's input to be inherently patentable, on the basis of its use of various technical features, including pre-defined menus and the inputting of commands to trigger their execution); T 769/92 - Sohei/General-Purpose Management System) ("Sohei") [1996] EPO 253, 27 IIC 373 (1996) (finding a system for management models to be inherently patentable on the basis of its dependence for implementation on the operator's technical judgment in making certain preliminary decisions beyond those involved in conventional acts of programming).
57. See, e.g., T 42/87 - Kearney/Computer-Related Invention ("Kearney") [1997] EPOR 236 (reasoning analogously from IBM/CRI [1990] EPOR 107 to support the patenting of a method for communicating messages relating to the operation of a tool to its human operator); T 164/92 - Bosch/Electronic Computer Components ("Bosch") [1995] EPOR 585 (finding a system for monitoring computer components to be inherently patentable on the basis of its technical effect in reducing the computer's operating speed); T 59/93 - IBM/Rotating Displayed Objects ("IBM/RDO") (Unreported, Technical Board of Appeal, 20 April 1994) (adopting a formalistic view of Art. 52(2) to support the patenting of a method of rotating digital objects, on the basis of its effect in enabling the programmer to perform a more accurate rotation); T 6/83 - IBM/Data Processor Network ("IBM/DPN") [1990] EPOR 91 (applying the language of the contribution theory to support the patenting of a technically conventional system for networking data processors by means of a computer program); T 110/90 - IBM/Editable Document Form ("IBM/EDF") [1995] EPOR 185 (applying the language of the contribution theory to support the patenting of a system for converting documents from one word processing system to another on the basis of the system's dependence on the technical features of the word processing systems and inability to be performed exclusively by mental means); T 236/91 - Texas Instruments/Language Understanding System ("Texas Instruments") [2000] EPOR 156 (finding a system for helping computer operators input words by selecting and entering words and phrases from menus generated and presented by the computer according to the operator's input to be inherently patentable, on the basis of its use of various technical features, including pre-defined menus and the inputting of commands to trigger their execution); T 769/92 - Sohei/General-Purpose Management System) ("Sohei") [1996] EPO 253, 27 IIC 373 (1996) (finding a system for management models to be inherently patentable on the basis of its dependence for implementation on the operator's technical judgment in making certain preliminary decisions beyond those involved in conventional acts of programming).
58. Compare, e.g., IBM/EDF [1995] EPOR 185 (see supra note 29) with IBM/DA&R [1990] EPOR 98, IBM/TCP [1990] EPOR 606 and AT&T [2001] EPOR 300 (see Appendix); Texas Instruments [2000] EPOR 156 (see supra note 29) with IBM/DA&R [1990] EPOR 98, IBM/TCP [1990] EPOR 606 and IBM/SRE [1989] EPOR 454 (see Appendix); Kearney [1997] EPOR 236 (see supra note 29) with IBM/DC (Unreported, Technical Board of Appeal, 23 October 1992) (see Appendix); Sohei [1996] EPO 253 (see supra note 29) with IBM/EIS [1998] EPOR 431, IBM/DC (Unreported, Technical Board of Appeal, 23 October 1992) and IBM/EBC (Unreported, Technical Board of Appeal, 29 October 1993) (see Appendix); IBM/RDO (Unreported, Technical Board of Appeal, 20 April 1994) (finding that an automated method is by definition not a method for performing a mental act within the meaning of Art. 52(2)(c); see supra note 29) with IBM/HC [1990] EPOR 181, IBM/DA&R [1990] EPOR 98, IBM/TCP [1990] EPOR 606 and IBM/SRD (Unreported, Technical Board of Appeal, 5 December 1989) (see Appendix).
59. See supra note 29.
60. See supra note 30.
61. Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments - Results of the Uruguay Round, Vol. 31, 33 ILM 81 (1994) ("TRIPS").
62. See Art. 27(1) TRIPS: "Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. Subject to [certain provisions], patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced."
63. T 935/97 - IBM/Computer Programs [1999] EPOR 301, [2.3], [2.6]. See also T 1173/97 - IBM/Computer Programs [2000] EPOR 219 (mirroring the reasons of T 935/97).
64. T 935/97 - IBM/Computer Programs [1999] EPOR 301, [2.3], [2.6]. See also T 1173/97 - IBM/Computer Programs [2000] EPOR 219 (mirroring the reasons of T 935/97).
65. T 1002/92 - Petterson/Queuing System [1996] EPOR 1 (applying the whole contents approach to allow a patent for a system for determining the queue sequence of customers, as a technical apparatus in the form of a 3D object having specific functional capacities and practical application in the service of customers).
66. See T 1002/92 - Petterson/Queuing System [1996] EPOR 1, [2.1].
67. See T 935/97 - IBM/Computer Programs [1999] EPOR 301, [6].
68. T 931/95 - PBS Partnership/Controlling Pension Benefits System ("PBS Partnership") [2002] EPOR 52 (involving an actuarial method for controlling a pension benefits program, claimed as the method and the programmed general-purpose computer by which it was implemented).
69. See PBS Partnership [2002] EPOR 52, [5].
70. See PBS Partnership [2002] EPOR 52, [5].
71. See text accompanying supra notes 15-22.
72. See PBS Partnership [2002] EPOR 52, [3] (rejecting formalistic interpretations of the requirement for an invention).
73. See Commission Proposal, COM(2002) 92 final (20 February 2002).
74. See Commission Proposal, COM(2002) 92 final (20 February 2002) recitals (2), (3), (5) and (16). The Commission Proposal followed the Commission's earlier identification of (Contd. on page 180) software patenting as an issue requiring urgent action at a Community level because of the alleged harm being caused to the Internal Market as a result of divergences in Member States' applications of Art. 52(2). (See "Promoting innovation through patents - The follow-up to the Green Paper on the Community patent and the patent system in Europe" ("The follow-up to the Green Paper"), COM(1999) 42 final (3 February 1999) 2, 12.) The "action" envisaged by the Commission was two-fold: first, a Community directive ensuring the availability of software patents, properly claimed, in line with U.S. and Japanese law; and second, amendment of Art. 52(2), by the EPC Contracting States, to remove the computer programs exclusion of paragraph (c). (See "The follow-up to the Green Paper", COM(1999) 42 final (3 February 1999) 13-4.) The second of these actions was considered at the 2000 Revision of the EPC, but rejected. (See Administrative Council, "Basic Proposal for the Revision of the European Patent Convention", EPO Doc MR/2/00 (2000) 43, 43[3]-[4] (describing the proposal as formal rather than substantive: "The EPO and the Boards of Appeal have always interpreted and applied the EPC in such a way that this exception in no way excludes appropriate protection for software-related inventions, i.e. inventions whose subject-matter consists of or includes a computer program.... Nevertheless, the point must be made that patent protection is reserved for creations in the technical field.") The first action was attempted by the Commission through its Proposal above.
75. Commission Proposal, COM(2002) 92 final (20 February 2002) 14.
76. ESC Opinion, COM(2002) 92 final - 2002/0047(COD) (19 September 2002) [3.12].
77. ESC Opinion, COM(2002) 92 final - 2002/0047(COD) (19 September 2002) [3.12].
78. ESC Opinion, COM(2002) 92 final - 2002/0047(COD) (19 September 2002) [3.16], [3.13].
79. ESC Opinion, COM(2002) 92 final - 2002/0047(COD) (19 September 2002) [3.1.1].
80. ESC Opinion, COM(2002) 92 final - 2002/0047(COD) (19 September 2002) [3.1.2].
81. ESC Opinion, COM(2002) 92 final - 2002/0047(COD) (19 September 2002) [3.1].
82. Position of the European Parliament adopted at first reading on 24 September 2003 with a view to the adoption of Directive 2003/.../EC of the European Parliament and of the Council on the patentability of computer-implemented inventions ("Parliament's Draft"), Parliament Doc No. A5-0238/2003, 2002/0047(COD) (24 September 2003).
83. See text accompanying supra notes 25-28.
84. Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions - Political agreement on the Council's common position ("Council Proposal"), Council Doc No. 9713/04, 2002/0047(COD) (24 May 2004).
85. The only significant amendment of the Parliament retained by the Council in its common position Proposal is that contained in Art. 5 of the Parliament's Draft; namely, that patent protection should not be available for computer-implemented business and other methods that fail to produce any technical effect beyond the usual physical interactions of a program and its implementing hardware. See Council Proposal, Council Doc No. 9713/04, 2002/0047(COD) (24 May 2004) Art. 4a(2).
86. Treaty Establishing the European Community ("EC Treaty"), OJ C 325 (24 December 2002) Art. 251.
87. If adopted the Council Proposal will have the same legal basis as the Common Proposal of the European Parliament and the Council of Ministers for a Directive on the Legal Protection of Biotechnological Inventions, Doc COM (88) 196 final - SYN 159, 17 October 1988, OJ No C (13 January 1989), on which see Case 377/98 - Pays-Bas v. Parliament and Council (ECJ, 10 September 2001) (available at 〈http://www.curia.eu.int/jurisp/cgi-bin/form.pl? lang=en&Submit=Submit&docrequire=alldocs&numaff=C- 377%2F98&datefs=&datefe= &nomusuel=&domaine=&mots= &resmax=100) (last visited 7 July 2004).
88. See Munich Conference, Minutes of the Proceedings of Main Committee I, Council of Europe Doc M/PR/1 (1973) [42]; Munich Diplomatic Conference, Comments by the Government of the Federal Republic of Germany, Council of Europe Doc M/11 (1973) [21].
89. See Munich Conference, Minutes of the Proceedings of Main Committee I, Council of Europe Doc M/PR/1 (1973) [42]; Munich Diplomatic Conference, Comments by the Government of the Federal Republic of Germany, Council of Europe Doc M/11 (1973) [21].
90. Patent Cooperation Treaty, opened for signature 19 June 1970, 9 ILM 978 (entered into force 24 January 1978) ("PCT"). See rules 39.1, 67.1 (international searching and preliminary examination authorities exempt from the need to deal with applications directed to any of the six specific types of subject matter listed in these rules).
91. See Luxembourg Conference, Minutes of the meeting of Working Party I (Luxembourg Conference, 8-11 July 1969), Council of Europe Doc BR/7/69 (1969) [22]; Luxembourg Conference, Minutes of the 9th Meeting of Working Party I held from 12 to 22 October 1971, in Luxembourg Conference, Council of Europe Doc BR/135/71 (1971) [97]. Note in this context the non-governmental organizations' objection to retaining paragraph 2 of the draft Art. 52 on the basis solely of its consistency with rules 39 and 67 of the PCT, on account of the different purpose of those rules. See Luxembourg Conference, Minutes of the 5th meeting of the Inter-Governmental Conference for the setting up of a European System for the Grant of Patents (Luxembourg Conference, 26 January to 1 February 1972), Council of Europe Doc BR/169/72 (1972) [11]. The Working Party's response to that objection was that the PCT rules, whilst concerned only with the requirements of search and examination, "could nevertheless be regarded as an encouragement towards national harmonization". See Luxembourg Conference, Minutes of the 9th Meeting of Working Party I held from 12 to 22 October 1971, in Luxembourg Conference, Council of Europe Doc BR/135/71 (1971) [95].
92. See Luxembourg Conference, Minutes of the meeting of Working Party I (Luxembourg Conference, 8-11 July 1969), Council of Europe Doc BR/7/69 (1969) [22]; Luxembourg Conference, Minutes of the 9th Meeting of Working Party I held from 12 to 22 October 1971, in Luxembourg Conference, Council of Europe Doc BR/135/71 (1971) [97]. Note in this context the non-governmental organizations' objection to retaining paragraph 2 of the draft Art. 52 on the basis solely of its consistency with rules 39 and 67 of the PCT, on account of the different purpose of those rules. See Luxembourg Conference, Minutes of the 5th meeting of the Inter-Governmental Conference for the setting up of a European System for the Grant of Patents (Luxembourg Conference, 26 January to 1 February 1972), Council of Europe Doc BR/169/72 (1972) [11]. The Working Party's response to that objection was that the PCT rules, whilst concerned only with the requirements of search and examination, "could nevertheless be regarded as an encouragement towards national harmonization". See Luxembourg Conference, Minutes of the 9th Meeting of Working Party I held from 12 to 22 October 1971, in Luxembourg Conference, Council of Europe Doc BR/135/71 (1971) [95].
93. See Luxembourg Conference, Minutes of the meeting of Working Party I (Luxembourg Conference, 8-11 July 1969), Council of Europe Doc BR/7/69 (1969) [22]; Luxembourg Conference, Minutes of the 9th Meeting of Working Party I held from 12 to 22 October 1971, in Luxembourg Conference, Council of Europe Doc BR/135/71 (1971) [97]. Note in this context the non-governmental organizations' objection to retaining paragraph 2 of the draft Art. 52 on the basis solely of its consistency with rules 39 and 67 of the PCT, on account of the different purpose of those rules. See Luxembourg Conference, Minutes of the 5th meeting of the Inter-Governmental Conference for the setting up of a European System for the Grant of Patents (Luxembourg Conference, 26 January to 1 February 1972), Council of Europe Doc BR/169/72 (1972) [11]. The Working Party's response to that objection was that the PCT rules, whilst concerned only with the requirements of search and examination, "could nevertheless be regarded as an encouragement towards national harmonization". See Luxembourg Conference, Minutes of the 9th Meeting of Working Party I held from 12 to 22 October 1971, in Luxembourg Conference, Council of Europe Doc BR/135/71 (1971) [95].
94. See Luxembourg Conference, Minutes of the meeting of Working Party I (Luxembourg Conference, 8-11 July 1969), Council of Europe Doc BR/7/69 (1969) [22]; Luxembourg Conference, Minutes of the 9th Meeting of Working Party I held from 12 to 22 October 1971, in Luxembourg Conference, Council of Europe Doc BR/135/71 (1971) [97]. Note in this context the non-governmental organizations' objection to retaining paragraph 2 of the draft Art. 52 on the basis solely of its consistency with rules 39 and 67 of the PCT, on account of the different purpose of those rules. See Luxembourg Conference, Minutes of the 5th meeting of the Inter-Governmental Conference for the setting up of a European System for the Grant of Patents (Luxembourg Conference, 26 January to 1 February 1972), Council of Europe Doc BR/169/72 (1972) [11]. The Working Party's response to that objection was that the PCT rules, whilst concerned only with the requirements of search and examination, "could nevertheless be regarded as an encouragement towards national harmonization". See Luxembourg Conference, Minutes of the 9th Meeting of Working Party I held from 12 to 22 October 1971, in Luxembourg Conference, Council of Europe Doc BR/135/71 (1971) [95].
95. On the consistency of Art. 52(2) of the EPC with Art. 27(1) of TRIPS see DANIELE SCHIUMA, "TRIPS and Exclusion of Software 'as Such' from Patentability", 31 IIC 36 (2000). On the consistency of Art. 52(2) of the EPC with U.S. and Japanese law see The follow-up to the Green Paper, COM(1999) 42 final (3 February 1999) 13.
96. On the consistency of Art. 52(2) of the EPC with Art. 27(1) of TRIPS see DANIELE SCHIUMA, "TRIPS and Exclusion of Software 'as Such' from Patentability", 31 IIC 36 (2000). On the consistency of Art. 52(2) of the EPC with U.S. and Japanese law see The follow-up to the Green Paper, COM(1999) 42 final (3 February 1999) 13.
97. See ESC Opinion, COM(2002) 92 final - 2002/0047(COD) (19 September 2002) Appendix.
98. See Report of the Committee on Legal Affairs and the Internal Market on the proposal for a directive of the European Parliament and of the Council on the patentability of computer-implemented inventions, A5-023 8/2003 (18 June 2003) Justifications for specific Amendments; Explanatory Statement [1].
99. [1985] OJ EPO 173, 177-9 (see especially paragraph 2.2, requiring a "contribution ... of a technical character"). See, e.g., JOHN WORTHY, "Software Patents in the UK After Merrill Lynch", 1989 European Intellectual Property Review 380, 381; SHERMAN, supra note 23, at 92. See also Merrill Lynch Inc's Application [1988] RFC 1 (SE, PAT), aff'd [1989] RFC 561 (CA); JAN A. H. VAN VOORTHUIZEN, "The Patentability of Computer Programs and Computer-Related Inventions under the European Patent Convention", 18 IIC 627, 628 (1987). But see also AXEL CASALONGA, "Is E-Commerce Patentable in Europe?", 33 IIC 261, 268 (2002) (noting the earlier use of "technical effect" in the section of the 1983 Guidelines dealing with computer-related inventions).
100. [1985] OJ EPO 173, 177-9 (see especially paragraph 2.2, requiring a "contribution... of a technical character"). See, e.g., JOHN WORTHY, "Software Patents in the UK After Merrill Lynch", 1989 European Intellectual Property Review 380, 381; SHERMAN, supra note 23, at 92. See also Merrill Lynch Inc's Application [1988] RFC 1 (SE, PAT), aff'd [1989] RFC 561 (CA); JAN A. H. VAN VOORTHUIZEN, "The Patentability of Computer Programs and Computer-Related Inventions under the European Patent Convention", 18 IIC 627, 628 (1987). But see also AXEL CASALONGA, "Is E-Commerce Patentable in Europe?", 33 IIC 261, 268 (2002) (noting the earlier use of "technical effect" in the section of the 1983 Guidelines dealing with computer-related inventions).
101. [1985] OJ EPO 173, 177-9 (see especially paragraph 2.2, requiring a "contribution ... of a technical character"). See, e.g., JOHN WORTHY, "Software Patents in the UK After Merrill Lynch", 1989 European Intellectual Property Review 380, 381; SHERMAN, supra note 23, at 92. See also Merrill Lynch Inc's Application [1988] RFC 1 (SE, PAT), aff'd [1989] RFC 561 (CA); JAN A. H. VAN VOORTHUIZEN, "The Patentability of Computer Programs and Computer-Related Inventions under the European Patent Convention", 18 IIC 627, 628 (1987). But see also AXEL CASALONGA, "Is E-Commerce Patentable in Europe?", 33 IIC 261, 268 (2002) (noting the earlier use of "technical effect" in the section of the 1983 Guidelines dealing with computer-related inventions).
102. [1985] OJ EPO 173, 177-9 (see especially paragraph 2.2, requiring a "contribution ... of a technical character"). See, e.g., JOHN WORTHY, "Software Patents in the UK After Merrill Lynch", 1989 European Intellectual Property Review 380, 381; SHERMAN, supra note 23, at 92. See also Merrill Lynch Inc's Application [1988] RFC 1 (SE, PAT), aff'd [1989] RFC 561 (CA); JAN A. H. VAN VOORTHUIZEN, "The Patentability of Computer Programs and Computer-Related Inventions under the European Patent Convention", 18 IIC 627, 628 (1987). But see also AXEL CASALONGA, "Is E-Commerce Patentable in Europe?", 33 IIC 261, 268 (2002) (noting the earlier use of "technical effect" in the section of the 1983 Guidelines dealing with computer-related inventions).
103. [1985] OJ EPO 173, 177-9 (see especially paragraph 2.2, requiring a "contribution ... of a technical character"). See, e.g., JOHN WORTHY, "Software Patents in the UK After Merrill Lynch", 1989 European Intellectual Property Review 380, 381; SHERMAN, supra note 23, at 92. See also Merrill Lynch Inc's Application [1988] RFC 1 (SE, PAT), aff'd [1989] RFC 561 (CA); JAN A. H. VAN VOORTHUIZEN, "The Patentability of Computer Programs and Computer-Related Inventions under the European Patent Convention", 18 IIC 627, 628 (1987). But see also AXEL CASALONGA, "Is E-Commerce Patentable in Europe?", 33 IIC 261, 268 (2002) (noting the earlier use of "technical effect" in the section of the 1983 Guidelines dealing with computer-related inventions).
104. See T 162/82 - Sigma/Classifying Areas [1987] OJ EPO 533; General Introduction to the Guidelines for Examination in the European Patent Office (available at 〈http://www.european-patent-office.org/legal/gui_lines/ 〉) (last visited 7 July 2004).
105. See T 162/82 - Sigma/Classifying Areas [1987] OJ EPO 533; General Introduction to the Guidelines for Examination in the European Patent Office (available at 〈http://www.european-patent-office.org/legal/gui_lines/ 〉) (last visited 7 July 2004).
106. See IBM/DA&R [1990] EPOR 98, [3]-[4].
107. See IBM/DA&R [1990] EPOR 98, [3]-[4], See also T 790/92 - Esswein/Automatic Programmer) [1991] EPOR 121 (interpreting the subject matter in Art. 52(2) as solutions to problems of an abstract, commercial or recreational character, which have no immediate influence on technological progress and are thus inherently non-technical); WOLFGANG TAUCHERT, "Patent Protection for Computer Programs - Current Status and New Developments", 31 IIC 812, 812 (2000) (describing lack of technical character as the criterion that links all the elements and activities mentioned in the German provisions corresponding to Arts. 52(2) and 52(3)).
108. See IBM/DA&R [1990] EPOR 98, [3]-[4], See also T 790/92 - Esswein/Automatic Programmer) [1991] EPOR 121 (interpreting the subject matter in Art. 52(2) as solutions to problems of an abstract, commercial or recreational character, which have no immediate influence on technological progress and are thus inherently non-technical); WOLFGANG TAUCHERT, "Patent Protection for Computer Programs - Current Status and New Developments", 31 IIC 812, 812 (2000) (describing lack of technical character as the criterion that links all the elements and activities mentioned in the German provisions corresponding to Arts. 52(2) and 52(3)).
109. See IBM/DA&R [1990] EPOR 98, [3]-[4], See also T 790/92 - Esswein/Automatic Programmer) [1991] EPOR 121 (interpreting the subject matter in Art. 52(2) as solutions to problems of an abstract, commercial or recreational character, which have no immediate influence on technological progress and are thus inherently non-technical); WOLFGANG TAUCHERT, "Patent Protection for Computer Programs - Current Status and New Developments", 31 IIC 812, 812 (2000) (describing lack of technical character as the criterion that links all the elements and activities mentioned in the German provisions corresponding to Arts. 52(2) and 52(3)).
110. See Patents Working Party, "Proceedings of the 1st meeting of the Patents Working Party" held at Brussels from 17 to 28 April 1961, Council of Europe Doc IV/2767/61-E (1961) Section 5, 5.
111. See Committee of Experts on Patents, "Observations of the United Kingdom Delegation; Technical Progress and Creative Effort", Council of Europe Doc EXP/Brev (56)4 (1956) 1-4 (considering a proposal that would have defined "invention" with reference to the concept of "technical progress").
112. See Act Revising the Convention on the Grant of European Patents (European Patent Convention) of 5 October 1973, last revised at 17 December 1991, Special Edition No. 4, 2001 OJ EPO 3 et seq. (Art. 52(1) as amended: "European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application."); Explanatory Memorandum to the Revision Act, Special Edition No. 4, 2001 OJ EPO 135[6] (describing the amendment to Art. 52(1) as "not changing] the actual legal position", but rather as expressing, in the "internationally binding terminology" of Art. 27(1) TRIPS, the "long-standing principle of European patent law that patent protection is available only for creations in a technological field"). See supra note 46.
113. [1996] RFC 511, 530 ("The types of subject-matter referred to in section 1(2) are excluded from patentability as a matter of policy. This is so whether the matter is technical or not.").
114. [1997] RFC 608, 614 (CA) (Aldous LJ). Note that the Court of Appeal still reached the same conclusion as Laddie J, albeit by a construction of Art. 52(2) as resolving to a single requirement for technical character. See [1997] RPC 608, 614. But cf. [1997] RPC 608, 617, 619 (reflecting his Lordship's concern that the mental methods and computer programs exclusions be considered separately when assessing the Fujitsu system's eligibility for a patent).
115. While this approach would no doubt attract criticism for offending the non-discriminatory philosophy of TRIPS (see Art. 27(1), extracted above supra note 34), that it would have that effect is far from clear, and would depend on one's definition of the criteria against which "discriminatory treatment" of subject matter is to be assessed.
116. [1989] RFC 147 (CA).
117. [1989] RFC 147, 208 (CA) (Purchas LJ) (acknowledging the different standards applied to computer-related subject matter and biotechnology in the context of sub-section 1(2), and ascribing that difference to public policy considerations specific to biotechnology).
118. ("Biotech Directive") Doc COM (88) 196 final - SYN 159, 17 October 1988, OJ No. C (13 January 1989).
119. See Decision of the Administrative Council of 16 June 1999 Amending the Implementing Regulations to the European Patent Convention, 1999 OJ EPO 437. The provisions in question are those governing the patentability of genetic material and other elements of the human body.
120. See especially EPC Implementing Regulations, rule 23b(1) (accepting the Biotech Directive as an interpretive aid to the EPC): "For European patent applications and patents concerning biotechnological inventions, the relevant provisions of the Convention shall be applied and interpreted in accordance with the provisions of this chapter. [The Biotech Directive] shall be used as a supplementary means of interpretation."
121. See Biotech Directive recital 16 (describing the requirement for an "invention" in European patent law as one means by which the application of patent law is restricted "so as (Contd. on page 187) to respect fundamental principles safeguarding the dignity and integrity of the person"). See also Biotech Directive recital 19 (referring to Ethical Aspects of Patenting Inventions Involving Elements of Human Origin, Opinion No. 8 of the Group of Advisers on the Ethical Implications of Biotechnology to the European Commission, 25 September 1996, available at 〈http://europa.eu.int/ comm/european_group_ethics/gaieb/en/biotec11.htm〉 (last visited 7 July 2004) (supporting, at [2.3], a view of European patentability criteria as "inspired by ... ethical principle"). This argument is consistent with the increasing support for tribunals' reliance on external rules, including fundamental rights, in an effort to stem "the continuing expansion of intellectual property rights outside their traditional bounds" and thereby "correct the slide towards protection [and] reestablish the proper balance of interests". See CHRISTOPHE GEIGER, "Fundamental Rights, a Safeguard for the Coherence of Intellectual Property Law?", 35 IIC 268 (2004).
122. On the varied role and impact of patents between industries and types of subject matter, see ROBERT P. MERGES & RICHARD R. NELSON, "On the Complex Economics of Patent Scope", 1990 Columbia Law Review 839; REBECCA S. EISENBERG, "Analyze This: A Law and Economics Agenda for the Patent System", 53 Vanderbilt Law Review 2081, 2083-5 (2000); CLARISA LONG, "Patent Law and Policy Symposium: Re-Engineering Patent Law: The Challenge of New Technologies: Part II: Judicial Issues: Patents and Cumulative Innovation", 2 Washington University Journal of Law and Policy 229, 245-6 (2000).
123. On the varied role and impact of patents between industries and types of subject matter, see ROBERT P. MERGES & RICHARD R. NELSON, "On the Complex Economics of Patent Scope", 1990 Columbia Law Review 839; REBECCA S. EISENBERG, "Analyze This: A Law and Economics Agenda for the Patent System", 53 Vanderbilt Law Review 2081, 2083-5 (2000); CLARISA LONG, "Patent Law and Policy Symposium: Re-Engineering Patent Law: The Challenge of New Technologies: Part II: Judicial Issues: Patents and Cumulative Innovation", 2 Washington University Journal of Law and Policy 229, 245-6 (2000).
124. On the varied role and impact of patents between industries and types of subject matter, see ROBERT P. MERGES & RICHARD R. NELSON, "On the Complex Economics of Patent Scope", 1990 Columbia Law Review 839; REBECCA S. EISENBERG, "Analyze This: A Law and Economics Agenda for the Patent System", 53 Vanderbilt Law Review 2081, 2083-5 (2000); CLARISA LONG, "Patent Law and Policy Symposium: Re-Engineering Patent Law: The Challenge of New Technologies: Part II: Judicial Issues: Patents and Cumulative Innovation", 2 Washington University Journal of Law and Policy 229, 245-6 (2000).
125. In the past, analysis of the failure of the Community patent initiative has tended to focus on the difficulties created by "short-term nationalistic interests" rather than by the existence of the European Patent Organization and EPC. In the context of the revived initiative see, e.g., JAN WILLEMS, "Awaiting the Community Patent - A Suggestion for a Flexible Interim Solution," 33 IIC 561, 561 (2002). But see, more recently, OTTO BOSSUNG, "A Union Patent Instead of the Community Patent - Developing the European Patent Into an EU Patent", 34 IIC 1 (2003) (supporting an abandonment of the Community patent initiative in its previously proposed form, and a revision of the Commission's task as being "to bring this core area of the [EPC] into the legislative domain of the Community" with a view to "transforming the existing European patent into a Union patent").
126. In the past, analysis of the failure of the Community patent initiative has tended to focus on the difficulties created by "short-term nationalistic interests" rather than by the existence of the European Patent Organization and EPC. In the context of the revived initiative see, e.g., JAN WILLEMS, "Awaiting the Community Patent - A Suggestion for a Flexible Interim Solution," 33 IIC 561, 561 (2002). But see, more recently, OTTO BOSSUNG, "A Union Patent Instead of the Community Patent - Developing the European Patent Into an EU Patent", 34 IIC 1 (2003) (supporting an abandonment of the Community patent initiative in its previously proposed form, and a revision of the Commission's task as being "to bring this core area of the [EPC] into the legislative domain of the Community" with a view to "transforming the existing European patent into a Union patent").
127. Proposal for a Council Regulation on the Community patent ("CP Proposal"), COM(2000) 412 final (1 August 2000).
128. See CP Proposal, COM(2000) 412 final (1 August 2000) 2.3.3.
129. See CP Proposal, COM(2000) 412 final (1 August 2000) 2.3.3, 2.3.4.
130. See CP Proposal, COM(2000) 412 final (1 August 2000) 2.3.
131. See ESC Opinion, COM(2002) 92 final - 2002/0047(COD) (19 September 2002) [5.4].
132. See supra note 45.
133. 19 September 2002 [5.4]. See The follow-up to the Green Paper, COM(1999) 42 final (3 February 1999) 13-4; supra note 45.
134. See Transcript of Plenary Debate, 〈http://swpat.ffii.org/papers/ eubsa-swpat0202/plen0309/deba/index.en.html〉 (reproducing Real Player stream available at 〈http://europa.eu.int/comm/ebs/schedule.cfm〉) (last visited 7 July 2004).
135. T 65/86 - IBM/Homophone Checker [1990] EPOR 181.
136. T 22/85 - IBM/Document Abstracting and Retrieving [1990] EPOR 98.
137. T 38/86 - IBM/Text Clarity Processing [1990] EPOR 606.
138. T 186/86 - IBM/Spatially Related Data (Unreported, Technical Board of Appeal, 5 December 1989).
139. T 52/85 - IBM/Semantically-Related Expressions [1989] EPOR 454.
140. T 158/88 - Siemens/Character Form [1992] EPOR 69.
141. Unreported, Technical Board of Appeal, 23 October 1992.
142. T 833/91 - IBM/External Interface Simulation [1998] EPOR 431.
143. T 204/93 - AT&T/Computer System [2001] EPOR 300.
144. Unreported, Technical Board of Appeal, 29 October 1993.