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Re: libdts patent issue?

On 20 Jul 2005 23:14:28 GMT, MJ Ray <mjr@phonecoop.coop> wrote:
> If the EPO is an artefact of the EPC, it can't be "the people
> who wrote that law" so why is EPO reinterpreting the EPC?
> Is it actually known whether the drafters meant the claimed
> "you can patent maths as part of a machine" view rather
> than the "maths is not patentable" from the UK Patent Act?

The EPO's job (particularly that of its Board of Appeals) is to
interpret the EPC in specific cases, helping inventors work through
mostly uncontroversial criteria for a well-crafted patent application
and recommending approval or denial to national patent offices.  While
it is not precisely a court, it operates on similar principles and
rules of law, and the rarity (as I understand it) of judicial review
of its rulings (as opposed to those of national patent offices) puts
it in a position of subject matter authority not unlike the US Federal

The EPC doesn't say "anything with math in it is unpatentable", nor
does it say "anything with math in it, plus any physical object, is
patentable".  It says:

Art. 52 (3)  The provisions of paragraph 2 [including the prohibitions
on patenting "mathematical methods" and "programs for computers" --
MKE] 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.

That "as such" has to be given some practical meaning by the Board of
Appeals in order to provide a concrete and reliable guide to examiners
and applicants as to what does and doesn't pass this "subject matter"
test.  It's not just a couple of throw-away words -- it's the entire
point of an entire clause of the Convention.  AFAICT there is no
analogue of the House Report on the Copyright Act of 1976 for the
Board to consult as evidence of legislative intent, so they have to
roll their own.

>From the one Board of Appeals decision I've looked at closely
(discussed ad nauseam in my reply to Arnoud), it appears to me that
the Board takes almost exactly the same stance articulated in recent
years by the Federal Circuit in the face of similarly ambiguous
guidance from Congress and the Supremes.  Dualism is on the retreat,
processes and machines are on an equal footing, and what makes
something not an abstract idea "as such" is that it be "susceptible of
industrial application" to reliably achieve a particular useful

The In re IBM ruling is not what I would call a model of clarity and
vigor, but it seems to me to stand for the same proposition as AT&T v.
Excel -- the subject matter test is there to distinguish the
theoretical from the applied, not to exclude applied science whose
underlying natural law is that of computational complexity and theory
of approximation instead of chemistry or physics.  The "novelty and
inventiveness" criterion is still there to bar inventions that are
trivial in light of the prior art.

In re IBM directs the examining division, not to grant the claims at
issue, but to evaluate them for "further technical effect" as a
question of fact rather than of law.  ("Further", here, means that the
examiner should ignore "technical effects" incidental to the
computer's internal mechanisms for executing programs.)  The
"technical effect" formula is facially different from the US's
"useful, concrete, tangible result", but they are equally judicially
created, and leave ambiguities regarding the patentability of
inventions at the fringe of the technical world such as automated
securities trading.

The EPC does explicitly exclude "methods for ... doing business", with
the same "as such" caveat; and in this it facially differs from US law
following State Street.  It's quite off-topic here so I won't go into
any detail, but In re PBS Partnership (the business methods case
Arnoud cited) denied issuance of a patent on quite strict "absence of
technical effect" grounds, distinguishing it on the facts from other
cases granting patents involving business methods such as Sohei and
Petersson.  The latter presumably remain controlling authority under
which the EPO must grant business method patents that meet the
"technical effect" test.

> That's something that I've wondered more than a few times.
> I know that's not the end of it, as pro-patenters seem
> to be pushing for their interpretation just in case it's
> not clear. I'm still amazed that the commercial UKPO has
> such a vital role in informing legislation - I thought the
> idea of Executive Agencies and Trading Funds was to offer
> some independence of government. Having them involved is
> like inviting Unisys (of BurnAllGIFs fame) to help run an
> information service about Free and Open Source software...

Do you really think it's fair to characterize as "pro-patenters"
people who are simply pointing out:
    the actual state of the law as embodied in decisions by the
relevant administrative and judicial authorities;
    the difficulty courts had in applying a "physical effect" test
consistently when it was believed to be the prescribed procedure;
    and the absence of a public policy rationale for denying the same
sort of encouragement to applied researchers (and their financial
backers) in fields where the work is done at a computer keyboard as in
those where it is done at a lab bench?

One can feel strongly about those points and still decry the evidence
of regulatory capture and the flood of unmeritorious patent
applications that has overwhelmed examiners and courts in recent

- Michael

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