Summary: I can still find no substantive difference between US and EPO law on software patentability.
On 7/20/05, Arnoud Engelfriet <[EMAIL PROTECTED]> wrote: [snip good stuff] > For contributory infringement you need additional evidence. > Contributory infringement is knowingly selling or supplying an item > for which the only use is in connection with a patented invention. > If you had a good faith belief the item had non-infringing uses, > then you're not contributing to infringement. > > Also the penalties tend to be different. So I do think there is > a difference. Fair enough. AIUI the standard here is that it must actually have substantial non-infringing uses and the vendor must be making a good faith effort to sell it for its non-infringing uses rather than using them as cover for a larger, infringing economic opportunity. When I get around to finding precedents from the Federal Circuit that clarify this question, and evaluate the associated penalties, I'll let you know. :-) [snip more good stuff] > The law says so: articles 52(2) and (3) EPC. > http://www.european-patent-office.org/legal/epc/e/ar52.html Understood that that's the statutory basis for the subject matter test (parallel to 35 USC 101), insofar as the EPC constitutes statute rather than treaty. > The EPO's Board of Appeals has issued several decisions that > discuss this article: > http://legal.european-patent-office.org/dg3/pdf/t971173ex1.pdf > (see page 12 of the PDF, sections 4 & 5) I've made a quick pass through this opinion (In re IBM) and find it unsurprising. Methinks the EPO's law clerks need to take some lessons in concise and vivacious writing from some of ours. I also observe that the case law established by previous Boards of Appeal is very much the primary source of citations, and if your courts aren't bound by stare decisis except in the same sort of extraordinary circumstances that ours are, I can't tell the difference. See Sections 7 and 11 of this ruling, and particularly this sentence from 11.3: <quote> This means that the question to be decided upon in the present appeal has not been answered earlier by the boards of appeal. Strictly speaking, the cited reasonings may therefore be considered to constitute obiter dicta and not ratio decidendi. </quote> As for the content of the ruling, it discusses the "physical" effect silliness quite a bit (and rather inconclusively), then tells the lower court to go back and consider the disputed claims on their merits, evaluating them for non-trivial "technical effect", rather than assume that they describe software "as such". Here is Section 12.2, the heart of the ruling: <quote> The present appeal relates to whether the subject matter of claims 20 and 21 is excluded from patentability under Article 52(2) and (3) EPC. The examining division decided that it was. The Board wishes to emphasize that it has decided only that a computer program product is not excluded from patentability under all circumstances. To the Board, those circumstances include the exact wording of the claims at issue. As the wording of present claims 20 and 21 shows, there are various ways in which a claim to a computer program product may be formulated. >From the fact that these claims were refused by the examining division on the basis of the cited passage in the Guidelines, the Board concludes that the examining division did not consider the exact wording of those claims in detail, and acknowledges that, from the examining division's point of view, there was little need to do so. However, now that the Board has decided that not all computer program products are prima facie to be excluded from patentability, a thorough examination of the exact wording of the claims has to be carried out. In order to preserve the appellant's right [not? -- MKE] to have this determined at two instances, the case is remitted to the first instance for further examination of this point. </quote> Apart from the substantial difference in writing style, it seems to me to be rather more similar to the opinions in Diehr, Alappat, and AT&T v. Excel than it is different. I have already spoken to AT&T v. Excel; the unanimity of this opinion, together with the denial of certioriari in State Street, suggests that this is now quite settled law in the US. Note that Alappat (1994) was decided en banc, with the "majority" opinion written by the same judge who wrote State Street. Alappat has one of the more complex opinion structures that I have seen: Rich, J., with whom: as to Part I (Jurisdiction): Newman, Lourie, and Rader, JJ., join; Archer, C.J., Nies, and Plager, JJ., concur in conclusion; and Mayer, Michel, Clevenger, and Schall, JJ., dissent; and as to Part II (Merits): Newman, Lourie, Michel, Plager, and Rader, JJ., join; Archer, C.J., and Nies, J., dissent; and Mayer, Clevenger, and Schall, JJ., take no position. This alone tends to be enough to trigger a lot of loose talk about the conformability of the decision with pre-existing law, just as did the 5-4 split in Diamond v. Diehr. For a more qualified commentator's take on how AT&T v. Excel settled the matter, read http://www.law.berkeley.edu/institutes/bclt/pubs/annrev/exmplrs/final/atfin.pdf ; for purposes of comparison to In re IBM, I will focus on Diehr instead. The dissent in Diehr presents a cogent history of the pre-1981 tug-of-war over software patentability in the Supreme Court and the Court of Customs and Patent Appeals (the predecessor to the Federal Circuit). It then proceeds to critique the majority opinion, essentially on stare decisis grounds. My own opinion (as if anyone cared) is that the dissent would have been correct if it had the factual posture straight -- but it didn't. Footnote 15 to the majority opinion says it all: <quote> The dissent's analysis rises and falls on its characterization of respondents' claims as presenting nothing more than "an improved method of calculating the time that the mold should remain closed during the curing process." Post, at 206-207. The dissent states that respondents claim only to have developed "a new method of programming a digital computer in order to calculate - promptly and repeatedly - the correct curing time in a familiar process." Post, at 213. Respondents' claims, however, are not limited to the isolated step of "programming a digital computer." Rather, respondents' claims describe a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured - a result heretofore unknown in the art. See n. 5, supra. The fact that one or more of the steps in respondents' process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under 101. As we explained when discussing machine patents in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972): "The patents were warranted not by the novelty of their elements but by the novelty of the combination they represented. Invention was recognized because Laitram's assignors combined ordinary elements in an extraordinary way - a novel union of old means was designed to achieve new ends. Thus, for both inventions `the whole in some way exceed[ed] the sum of its parts.' Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950)." Id., at 521-522 (footnote omitted). In order for the dissent to reach its conclusion it is necessary for it to read out of respondents' patent application all the steps in the claimed process which it determined were not novel or "inventive." That is not the purpose of the 101 inquiry and conflicts with the proposition recited above that a claimed invention may be entitled to patent protection even though some or all of its elements are not "novel." </quote> And in fact, the scope of the Diamond v. Diehr opinion is limited to the Section 101 consideration (whether the invention is statutory subject matter), and explicitly authorized the lower court to reject the patent on Section 102 (novelty) or 103 (non-obviousness) grounds if the facts warranted. Compare Section 8 of In re IBM: <quote> The Board takes this opportunity to point out that, for the purpose of determining the extent of the exclusion under Article 52(2) and (3) EPC, the said "further" technical effect may, in its opinion, be known in the prior art. Determining the technical contribution an invention achieves with respect to the prior art is therefore more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Article 52(2) and (3). </quote> > http://legal.european-patent-office.org/dg3/pdf/t950931eu1.pdf > (see page 12, similar reasoning for a business method) > > The Germans issued a somewhat similar decision in 2000: > http://swpat.ffii.org/papers/bgh-sprach00/index.en.html I'll try to get to these sometime but it doesn't feel urgent. :-) Cheers, - Michael (IANAL, TINLA)
