[Random-bits] European Patent Convention and Business methods exception
James Love
love@cptech.org
Mon, 31 Jul 2000 12:46:45 -0400
July 31, 2000
I'm told that the European Patent Office (EPO) will be considering
significant changes in the European Patent Convention, during a November
20-29 meeting in Munich, in part to comply with the WTO TRIPS accord on
intellectual property rights. One issue that may be raised in this
meeting will be the current EPO exemption for patents on methods of
doing business. Persons at the World Intellectual Property Organization
(WIPO) tell me that they believe the European Patent Convention
exemption for patents on methods of doing business is not consistent
with Article 27.1 of the WTO TRIPS agreement (see below). This is a
controversial issue. The TRIPS does require patents on all fields of
technology, but only "provided that they are new, involve an inventive
step and are capable of industrial application," the last phrase being
key. Under Article 1 of the TRIPS, countries are supposed to have broad
discretion to implement the TRIPS accord under their own legal
tradition. Right now the European Patent Convention excludes methods of
doing business as a invention susceptible of industrial application.
(see below).
The revisions of the European Patent Convention will have huge
implications for the future of patents on business methods. If Europe
elimiates its current exemption for methods of doing business (see
below), it will be very difficult for other countries to argue that the
WTO does require patents on software and methods of doing business.
I have attached several relevant documents on this important topic.
European NGOs should be in touch with the European Patent Office, and
request observor status for the November 20-29 meeting in Munich.
Jamie Love <love@cptech.org>
http://www.cptech.org/ip/business/
--------------------
http://www2.european-patent-office.org/search?NS-search-page=document&NS-rel-doc-name=/ojft/eng/4_2000/4_1950.htm&NS-query=%22diplomatic+conference%22&NS-search-type=NS-boolean-query&NS-collection=OJ%20English&NS-docs-found=8&NS-doc-number=6
Notice from the President of the European Patent Office dated 24 March
2000 concerning revision of the European Patent Convention.
In a decision dated 24 February 2000(1) the Administrative Council of
the European Patent Organisation convened an EPC revision conference of
the contracting states. The conference is to be held in Munich from 20
to 29 November 2000. Invitations to attend the conference as observers
have also been extended to the states entitled to accede to the EPC, the
other states with observer status on the Administrative Council and
numerous intergovernmental and non-governmental organisations with an
interest in the European patent system.
[snip]
<----------------EPO ON PATENT OF BUSINESS METHODS------------>
http://www.european-patent-office.org/epo/pubs/oj000/7_00/7_3070.pdf
Administrative Council
Report on 80th meeting of the Administrative Council of the
European Patent Organization (6 to 8 June 2000).
Amtsblatt EPA /Official Journal EPO /Journal officiel OEB 7/2000
page 310
Another area where there is contro-versy about patentability is
business and administrative methods. The EPC explicitly excludes
the patent- ability of methods of doing business as such.Even
so,there has been a large increase in the number of applications
in these areas because of the expansion of e-commerce on the
Internet and decisions handed down by the US Court of Appeals for
the Federal Circuit that business methods are not necessarily
exclu-ded from patentability in the United States.The number of
applications of this type waiting to be searched and examined has
more than dou- bled over the last two years and at present totals
around 400.
In practice,the vast majority of these applications do not simply
claim abstract business methods, but rather describe technical
means (eg computer networks)for carrying out these methods.They
are not considered to relate to methods of doing business as
such,and are examined in exactly the same way as any other
application.They are thus patentable in Europe if they fulfil the
normal requirements for patentability,including novelty,
inventive step and industrial appli-cability.However,it has to
be stressed that,in a strict interpretation of patent law,an
invention must overcome an objective technical problem in a
non-obvious way.In other words,it is the technical inven-tion to
which a business machine may relate which makes it patent-
able, not simply its commercial ingenuity.
page 311
Predictably,this topic has generated a great demand for
information from representatives,applicants and the public
alike.The Office has taken every opportunity to make its posi-
tion clear and has frequently sup-plied speakers for seminars
and conferences.
[snip]
<-----Excerpt of Article 52 of European Patent Convention---->
Article 52
(2) 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.
<--------------TRIPS PROVISIONS------------------------------>
PART I
GENERAL PROVISIONS AND BASIC PRINCIPLES
Article 1
Nature and Scope of Obligations
1. Members shall give effect to the provisions of this Agreement.
Members may, but shall not be obliged to, implement in their law more
extensive protection than is required by this Agreement, provided that
such protection does not contravene the provisions of this Agreement.
Members shall be free to determine the appropriate method of
implementing the provisions of this Agreement within their own legal
system and practice.
[snip]
STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF INTELLECTUAL
PROPERTY RIGHTS
SECTION 5: PATENTS
Article 27
Patentable Subject Matter
1. 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.See footnote 5 Subject to
paragraph 4 of Article 65, paragraph 8 of
Article 70 and paragraph 3 of this Article, 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.
2. Members may exclude from patentability inventions, the prevention
within their territory of the commercial exploitation of which is
necessary to protect ordre public or morality, including to protect
human, animal or plant life or health or to avoid serious prejudice to
the environment, provided that such exclusion is not made merely because
the exploitation is prohibited by their law.
3. Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the
treatment of humans or animals;
(b) plants and animals other than micro-organisms, and
essentially biological processes for the production of plants or animals
other than non-biological and microbiological processes. However,
Members shall provide for the protection of plant varieties either by
patents or by an effective sui generis system or by any combination
thereof. The provisions of this subparagraph shall be reviewed four
years after the date of entry into force of the WTO Agreement.
Footnote: 5. For the purposes of this Article, the terms "inventive
step" and "capable of industrial application" may be deemed by a Member
to be synonymous with the terms "non-obvious" and "useful" respectively.
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James Love, Director | http://www.cptech.org
Consumer Project on Technology | mailto:love@cptech.org
P.O. Box 19367 | voice: 1.202.387.8030
Washington, DC 20036 | fax: 1.202.234.5176
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