[DMCA-Activists] Miceli: The Software Patent Fairy Tale

[Seth Johnson]

Attached is the best summary yet of the situation with software
patents in Europe, by someone who says he believes in the term
"Intellectual Property Rights."  :-)

Preface by Seth:

But what matters is that this article is the natural development
of the effective methods applied by the movement in Europe, where
the law stipulates that software is not patentable.  The movement
has been feeding the right messages since shortly before the
First Reading, and now the narrative is being fully presented. 
The lucidity of this article is stunning for anybody who has
watched the arrogant obfuscation that has pervaded the EU
political community and media regarding this issue.  But it's all
here.

I disagree with Miceli on a certain key point, when he says the
"CII Directive" was not killed by the anti-sw-patent folks, but
by a decision of the pro-sw-patent lobby to kill the Directive
when it became evident that they were about to actually achieve
clarity regarding how to handle inventions that contain software,
without making software patentable.

I like to emphasize that it was indeed the movement that
triggered that, that it was the specific decision to draw the
line by focusing on highlighting the contradictions throughout
the campaign, that both forced that moment to a head and made
this article possible.  This is how a principled movement was
created.  Once this occurred:

  - Many groups came together, including the free software
community which had long stood on principle and had focused on
meticulously building the constituency for software freedom on
that basis;
  - FFII transformed almost instantly once the decision was made;
with
    * the site growing intensely clearer; and
    * a critical move taking place away from legislative finesse
and negotiation, to movement-building that created a base of
power to speak from, based on clear line that communicated the
key principles through exposing of contradictions;
  - The nosoftwarepatents.com site sprang into existence, pulling
together the contradictions and myths that had become the focus
of the movement and becoming a powerful and succinct reference
point for the movement;
  - The media began to finally pick up pieces of the messages we
sought to convey due in no small part to the undeniability (and
yes, volatility) of the contradictions being highlighted;
  - The EU Parliament was politicized and made to recognize that
yes, they were indeed in a moment of supreme democratic stakes;
  - Through many developments, the final confrontation in the
Second Reading could not possibly have been clearer -- to the
extent that I felt many more of the remaining EP members who had
not come to comprehend the issue probably came to their clearest
understanding on that day;
  - And now, this article has come into being in a manner much
like the nosoftwarepatents.com site and the gradual transition in
the media coverage, compiling now for the legal community all the
pieces, all the myths and individual deceptions that the movement
has worked so assiduously to separate and expose and thereby use
to educate those they sought to influence.


So, a specific decision to use the traditional movement-building
technique of drawing a line that illustrates the principles by
exposing contradictions and blowing them wide apart, led to the
moment at which those who were trying to codify the bogus
practice of granting software patents at the EPO, were compelled
to withdraw the Directive by which they were trying to do that. 
The pro-software-patent side may have made that individual
decision, but they were put in the position of having to do that
because of how the movement created the moment with a kind of
surgical precision.

Anyway, enough of my pontificating.  This is a REALLY GOOD
article!  :-)


Seth

> http://www.groklaw.net/article.php?story=20060115145429444


Quietly Tying Down Gulliver - The SW Patent Fairy Tale ~ by Cristian Miceli

Sunday, January 15 2006 @ 09:28 PM EST


Cristian Miceli is an IT lawyer in the UK. This article is a roundup look at 
software patent issues in 2005. It addresses the question of whether software 
patents are beneficial or counterproductive. Its intended audience is other IT 
lawyers, but the rest of us can enjoy it too.


As an attorney, Miceli says he believes in intellectual property rights, and 
"as part of this, I see the benefits that patents can potentially bring in 
certain sectors. However, as one law professor recently commented, 'good policy 
does not just consist of "more rights"; it consists of maintaining a balance 
between the realm of property and the realm of the public domain'”.

I've formatted it so that you can click on a footnote number and read the 
footnote, then click on the number and return to the main text. You can also 
download the paper, if you prefer to read it as a PDF, here.

******************************************

Quietly Tying Down Gulliver,

The Software Patent Fairy Tale


~ by Cristian Miceli


The Battle of Trafalgar

One of the funniest things I saw this year was a photo of a rather large white 
cruiser bearing down on a small rowing boat on the lake outside the European 
Parliament. This was not the Battle of Trafalgar but the battle between the 
pro-software patent lobby (big white cruiser) and the anti-software patent 
lobby (small rowing boat). On this particular day, no blood was spilt, but this 
had been a little skirmish in a long running battle.

The battle has been played out for many years but in recent years has come to a 
head since the proposal of the Directive on the patentability of 
computer-implemented inventions (2002/0047/COD) (the ‘CII Directive’) on 20 
February 2002. What followed was a roller-coast ride through the EU legislative 
process culminating in the rejection of the CII Directive on 6 July 2005 where 
neither side could claim a complete victory.

Since its rejection, as for as the UK has been concerned, there have been four 
High Court decisions on the scope of patentability, a change in the UK Patent 
Office’s (‘UKPO’) practice following one of these cases, (IN THE MATTER OF 
Patent Applications GB 0226884.3 and 0419317.3 by CFPH L.L.C. [2005] EWHC 1589 
(Pat), (“CFPH”) decided by Prescott QC) and a number of potentially important 
UKPO hearing officer decisions.1 It has been a turbulent year. As will be 
discussed below, with CFPH we finally had some clarity in English law on the 
issue of software patents with a detailed judgment which explored the purpose 
behind the computer programs exclusion and sought to lay down a test for 
patentability firmly grounded on the European Patent Convention 1973 and public 
policy. However, it has been a brief calm in the storm because although this 
thorough approach was confirmed by the UKPO and the case applied by a High 
Court judge on 4th November (see IN THE MATTER OF UK Patent Application 
no.GB0108683.4 in the name of Cecil Lloyd Crawford (2005)(“Crawford”)), the 
waters have once again been slightly muddied by a decision of Mr. Justice 
Pumfrey in the High Court which although heard several months before Crawford 
was only published on the 7 November (see, IN THE MATTER OF Patent Application 
GB 0017772.5 by Shopalotto.com Limited, [2005] EWHC 2416 (Pat) (“Shopalotto”)).

The Shopalotto judgment should be treated as a pirate ship, which would be 
better at the bottom of the ocean, for it is weak judgment compared to CFPH and 
Crawford. The judgment lacks detail, ignores the careful analysis undertaken by 
Prescott QC (the case is not even referred to in the judgment) or the change in 
UKPO practice, fails to adopt a purposive approach to the EPC and to recognise 
the clear policy reasons for not allowing the foreclosure (i.e., 
monopolisation) of software under a patent system and gives weight to a body of 
decisions of the European Patent Office (“EPO”) institutions that lack any 
legal or democratic foundation and which, against the purpose of the European 
Patent Convention 1973 (“EPC”), endorse the idea of the ‘software invention’, 
i.e., that a computer program can have patentable “technical effects” outside 
of any other claimed physical artefact or industrial process other than a 
computer.

The need for debate

There are a great many myths which have been propagated about the CII Directive 
and the desirability of software patents and there has been little objective 
debate about the CII Directive and, more particularly, about software patents 
amongst IT lawyers.

Why this article?

Put simply, the clouded and subjective debate over the CII Directive and 
software patents is detrimental both for IT lawyers and the IT industry.

Notwithstanding the recent English developments, there is little doubt that the 
debate over the patent system is to be had at a European level. Firstly, UK 
patent legislation to all intents and purposes transposes the EPC. Secondly, 
from an economic perspective, if we are to effectively compete against the US 
and Asia, we need to be able to guarantee innovation at a European level 
through pan-European laws.

With the Community Patent on the horizon, the issues debated on the CII 
Directive are bound to reappear and the outcome of such debate could have a 
long-term effect on the economic health and diversity of the UK and European IT 
sector. As IT lawyers, given our wealth is dependent on the health of such 
sector, we should be showing more of a passing interest. Furthermore, on the EU 
Commission’s own figures from i2010, “ICT account[s] for 40% of Europe’s 
productivity growth and for 25% of EU GDP growth”. These are big figures by 
anyone’s standards -- the IT industry is vital to the European economy: at the 
heart of a successful Europe there has to be a successful home grown software 
industry.

Given the above, it would seem absurd that a European directive would put at 
risk such an important part of our economy, but early this year, this is almost 
what happened. The fact that many people cannot imagine that those at the head 
of Europe may not be acting in our best interests is understandable when the 
debate has been shrouded in a campaign of disinformation. If not as IT lawyers, 
then as citizens whose economy is inextricably linked with the rest of Europe 
we should be concerned that we are not getting the full picture and take the 
moral responsibility to ensure that any debate is objective.

Getting religious

When you wish to conduct an independent survey about whether it is good to be 
catholic, if you are only going to ask the pope and his cardinals, you cannot 
call the results objective.

We have asked the pope and cardinals of the patent system and accepted their 
version of events not only on what the CII Directive intended to achieve but, 
somewhat more subtly, whether software patents are desirable. We, as lawyers, 
should recognise the conflict of interest but let me instead use the words of a 
more enlightened cardinal:

    “most patent lawyers -- most lawyers in general - …. unthinkingly spout 
pro-patent slogans. That is because most patent and IP and even other attorneys 
with an opinion on this issue mindlessly parrot the simpleminded economics with 
which they were propagandized in law school. Virtually every patent lawyer will 
reiterate the mantra that "we need patents to stimulate innovation," as if they 
have given deep and careful thought to this…..It does not take a genius to 
figure out why most patent lawyers are in favor of the patent system; and it is 
not because they have really studied the matter and dispassionately concluded 
that society is better off with a patent system -- it is because they don't 
want to see the system that pays the mortgage for them eroded or abolished.”2 

This article is not meant to be a sermon, what I have tried to do is 
independently review the issues at stake and leave it the reader to make 
his/her own analysis. However, if I am to preach about objectivity, then that 
must start with me the author. Do I believe in intellectual property rights 
(“IPR”)? Yes I do and, as part of this, I see the benefits that patents can 
potentially bring in certain sectors. However, as one law professor recently 
commented, “good policy does not just consist of ‘more rights'; it consists of 
maintaining a balance between the realm of property and the realm of the public 
domain”.3

I do not work nor have any financial interest in an open source software 
company nor am I getting paid, whether directly or indirectly, for writing this 
article or for expressing a particular view point. In fact, rather than 
standing to gain financially by encouraging the reader to adopt the views that 
I am espousing, I am more likely to have put a damper on any prospect of having 
a lucrative in-house position overlooking the M4 motorway (perhaps a good 
thing). If we are to see through the smog of disinformation, we first need to 
explore the key myths that have been put up in our way to obscure our vision.

The CII Directive: the fairy tale

Myth 1: the European Competiveness Council, the European Commission and the 
Council of Ministers, as the white knights of European democracy and with our 
(European) best interests at heart, gallantly proposed a directive which, in 
its several drafts, sought to do nothing more than to codify and unify our 
existing laws on patents (commendable) in the area of computer related 
inventions whilst at the same time not extending the scope of patentability.

It is a wonderful fairy tale. Unfortunately for the knights, they were robbed 
by a bunch of European peasants, knocked to the ground once, got to their feet 
as if nothing had happened (and didn’t change their noble rhetoric) and 
proceeded to get knocked down for the second time, this time by more peasants 
and, if not a little belatedly, one or two noble men.

Those who are not interested in an objective debate about the benefit of 
software patents for the software industry want you to believe that the fairy 
tale is true and that MEPs for the last couple of years have been misled by a 
group of hairy open source hippies hell bent on preventing such unification of 
existing laws.

Upon what basis do they claim so valiantly that the CII Directive was not 
seeking to change the law (i.e., extend patentability) and that the hairy open 
source hippies, or peasants in my (or their) little fairy tale, got it wrong? 
Well, to put it bluntly, because these bastions of European democracy told us 
that this was the case. In other words, the pronouncements of these 
institutions is rightly to be treated as divine against the heretical 
statements of the open source community who should be burnt at the stake for 
having the audacity to question the knights’ intentions and disrupt the march 
of software patents across the world. The history of the passage of the CII 
Directive through the EU institutions exposes this myth.

If the actual words of the various drafts were so clear, why did the EU 
Parliament propose substantial amendments at the first reading, why did the 
Legal Affairs Committee of the European Parliament (JURI) vote overwhelmingly 
to restart the legislative process and, finally, why was a directive rejected 
for the first time in European history at its second reading? Was this purely 
the result of MEPs being misled by a misguided open source software community? 
To continue to make such a claim in the light of the history of the CII 
Directive is asking us to accept that MEPs are incapable of undertaking a 
simple analysis of the patent system or making independent judgements. It also 
discredits one of the greatest grass roots movements in recent European 
political history.

European laws should be made for the benefit of Europe and its citizens. This 
may sound like common sense but for many arguing for software patents there 
seems to be an assumption that EU institutions should be working in the 
interests of the large IT corporations (the minority companies in the IT 
industry – see below). Laws should only be passed if they serve the public 
interest. For this to happen, or at least have a chance of happening, there 
needs to be a democratic and accountable legislature deciding these laws.

The Commission and Council of Ministers are not democratic; they are not 
elected by the public or directly accountable. The course of the CII Directive 
through the EU institutions is marked with several unsavoury incidents where 
the Commission and the Council of Ministers failed to give heed to the 
overwhelmingly clear wishes of the European Parliament, the only democratically 
elected EU institution. These failures, aside from the substantive debate, have 
left many question marks on the lack of democracy and transparency within the 
Commission and the Council of Ministers. As lawyers, why are we failing to 
comment on these shenanigans? Why was the Commission and Council of Ministers 
so keen to push through their draft –- referred to ironically as the 'Common 
Position” but which could never be described as having anything in “common” 
with the views of the EU Parliament -- at all costs?

Had it not been for the undemocratic insistence of the EU Commission and 
Council of Ministers being so well documented by the anti-software patent 
lobby, coupled with the now notoriously unethical lobbying tactics of the 
pro-software patent lobby (reported to the EU anti-fraud commissioner by 
European lobby watchdogs4 -- I have never seen more dirty noblemen and such 
clean peasants), I and many others would have been none the wiser as to how far 
short the actual text of the proposed CII Directive fell from the boldly stated 
aims.

Part of the way Myth 1 has been spun has been dependent on the second myth of 
the legality of “software inventions” and the “existing law” which the 
Commission was attempting to unify.

“Existing law”

Myth 2: Patents for “software inventions” have been granted for many years by 
the EPO so they must be valid and part of the “existing law” which the 
Commission was trying to unify and codify.

When an act that is illegal gets carried out repeatedly without sanction it is 
understandable that many might subconsciously or otherwise consider such act 
legitimate. For our storytellers, the granting of patents for ‘software 
inventions’ has never been seen as prohibited but instead as ‘part of the 
existing law’. Therefore, they could declare that Myth 1 was correct because 
for them, if the CII Directive allowed software patents it would not be an 
extension of patentability.

It is at this point that the seeds of objection to Myth 1 start to germinate, 
for the grant of software patents by the EPO is not legal, and therefore, is by 
definition not “existing law”.

In CFPH, Prescott QC confirmed what many of us have been saying for some time, 
that current law has plenty of room for inventions which include computer 
programs –- these are not prevented by the EPC. There are those that said we 
needed to desperately clarify the law and make the IT industry aware that they 
can patent inventions which involve computer programs and the presence of 
computer programs does not prevent them being patentable. If this had been the 
only outcome of the CII Directive, I would have been the first person lobbying 
for it to be adopted, for it would have done nothing more than confirm the 
spirit of the EPC. An invention which involves a computer program should not be 
precluded from patentability if it satisfies all other patentability criteria 
provided the computer program itself is not foreclosed.

However, the CII Directive was in substance going far further than this, it 
sought to legitimise the undemocratic grant of software patents by the EPO and 
the decisions of the Board of Appeals of the EPO (the ‘BA’) favoured by the big 
name software players (the majority being non-European organisations) which 
would have resulted in the foreclosure of computer programs.

The EPO -- the law of an administrative body

The EPO and the BA are administrative organisations, responsible for 
implementing the EPC not for amending it. The source of existing law is not the 
EPO and the BA but the EPC together with the interpretation of the EPC at a 
national level, interpreted by an independent judiciary whose livelihood is not 
dependent on the granting of more patents. As Prescott QC eloquently commented:

    “The EPO is not equipped with a staff of expert economists who are 
competent to decide if the patenting of business methods, or computer programs, 
would be good for our country and even if it was it would still be for our 
Parliament to decide.” 5 

Prescott QC’s comments apply equally to all national patent offices including 
the UKPO. Patent offices are administrative bodies entrusted with the task of 
implementing democratically made laws. They are not legislatures. This is the 
way it should be. They do not have the democratic mandate, the independence or 
a team of suitably qualified economists to make law.

The EPO is a structure that lacks the fundamental characteristics of a 
competent legislature. It has no mechanism for conducting public consultations 
on crucial issues such as extending patentability to new areas, it is not 
democratically elected and its staff, as Prescott notes, are not suitably 
qualified to evaluate economic and public policy issues concerning patent laws. 
No detailed study has ever been conducted by the EPO as to the desirability of 
software patents and even if such a such a study had been undertaken it lacks 
the independence to properly evaluate any results -- yet, despite such 
constitutional issues, it has taken upon itself to extend patentability.

Given the lack of independence of both the EPO and national patent offices, we 
should be questioning the significant lobbying activities of patent offices 
across Europe and the EPO’s own stance in the CII Directive debate.

Although, the BA may sound a ‘legal body’, it has no authority on substantive 
areas of law and is a technical appeals board. Like the EPO, its function is 
not to make new law but to implement the EPC. For the above reasons, as 
Prescott QC confirmed, the BA’s case law is not prescriptive, as it is a 
technical body not a legislature or judiciary -– it cannot extend patentability 
by creating new laws (or not legally anyway).

The opposition to the Common Position did not come from those seeking to 
undermine an attempt to harmonise existing laws. There is a need to clarify the 
EPC in the area of inventions involving computer programs. However, what those 
campaigning against the Common Position saw was that the text of the CII 
Directive would not have resulted in the EPC being clarified (existing law) but 
instead would have succeeded in putting the case law of the BA, an 
administrative and technical body which had departed from the letter and spirit 
of the EPC, on a statutory footing and in so doing create new law and extend 
patentability; precisely the opposite of what the Commission and others claimed 
the text would do.

A story of divergence – the decisions of the EPO and BA

The EPC contains two important statements about computer programs:

    1) they “shall not be regarded as inventions” (Article 52(2)(c)); and

    2) that computer programs shall be excluded from patentability “only to the 
extent to which a European patent application or European patent relates to 
such subject-matter or activities as such” (Article 52(3), emphasis added).

There is no ambiguity as to whether computer programs are patentable under the 
EPC. They are “not inventions” and therefore cannot be patentable, or should 
that be cannot be patentable ‘as such’.

That’s right, in the run up to the CII Directive many MEPs were convinced by 
those supporting the CII Directive that the Common Position did not allow a US 
style system of software patents because computer programs were excluded from 
patentability “as such”. For most people this sounds satisfactory and many MEPs 
concluded there was not any intention to patent software and that the CII 
Directive would not have foreclosed software.

However, if you actually asked those who were pushing the Common Position, “can 
any software be patented?”, you would have got the response, “well, not 
software “as such”, but yes if the software produces a technical effect because 
then it is a software invention”. What is the difference between “pure” 
non-technical software and “technical software” or a “software invention”? The 
answer is, there isn’t any difference. At the end of the day what is being 
patented is the computer program except by the magic word “technical” what was 
previously not patentable becomes patentable. As Jim Warrant, board member of 
Autodesk (a world famous CAD software company) said in 1994 in his impassioned 
plea to the US Patent Office at hearings held over software patents, the 
concept of the “software invention” is…a pure invention:

    “Thus, I respectfully object to the title for these hearings -- 
"Software-Related Inventions" -- since you are not primarily concerned with 
gadgets that are controlled by software. The title illustrates an inappropriate 
and seriously-misleading bias. In fact, in more than a quarter-century as a 
computer professional and observer and writer in this industry, I don't recall 
ever hearing or reading such a phrase -- except in the context of legalistic 
claims for monopoly, where the claimants were trying to twist the tradition of 
patenting devices in order to monopolize the execution of intellectual 
processes.” 

Let’s go back to the fairy tale. Imagine, that the king prescribed that knights 
were only allowed to graze sheep on his royal land and that cattle were out. 
Well, imagine if the knights turned round and argued that if the cow could sing 
and dance, it wasn’t really a cow but a technical cow which wasn’t a cow “as 
such” and could therefore graze with the sheep. Do we think the knights could 
pull the wool over the king’s eyes? After all, it may be a singing and dancing 
cow, but it is still a cow.

Unfortunately, the fields are now full of cows. The fact that the pro-software 
patent lobby could make the dubious distinction between software “as such” and 
“technical software” as an excuse to foreclose software and thus fill the field 
with prohibited cows lies in the divergence of the BA and EPO from its 
administrative function of interpreting the EPC in a purposive way to extending 
patentability.

Starting with the decision in Viacom and culminating in the decision in 
Hitachi, the BA’s decisions and the practice of the EPO have resulted in 
software being effectively foreclosed by the bottomless pit and malleable 
concepts of, “technical contribution” and more recently “technical features”.

These are not phrases that appear in section 52 EPC (which defines what a 
patentable invention is). 6 The concept of what is “technical”, and 
consequently “technology”, is not defined in the EPC. What the BA and EPO have 
in practice done is to interpret the word “technical” so broadly that 
“technical features” can be found in virtually all software. 7 As Prescott QC 
commented in CFPH:

    “Now let me outline the practice of the European Patent Office. They look 
at the applicant’s claim, and ask themselves: does it have any “technical 
features”? If there are no “technical features” at all they reject the 
application, for not being an ‘invention’. But they consider it is an invention 
if there is any “technical feature” at all. They take it very far. Even paper, 
or ink, can count as a technical feature”.8 

In doing so, they have failed to recognise that software cannot be considered 
as “technical” or “technology” for patent purposes, because, although 
“technology” is not defined positively in the EPC, it is defined negatively by 
reference to what is known as “excluded subject matter” (and computer programs 
are, as noted above, excluded subject matter). This is expressly recognised by 
Prescott QC in CFPH when he comments:

    “it will often be possible to take a short cut by asking “Is this a new and 
non-obvious advance in technology?” That is because there can often be 
universal agreement about what is ‘technology’….But sometimes it will not be 
possible without running the risk of error...If there is any doubt it will then 
be necessary to have recourse to the terms of Article 52 of the Convention.” 9 

Unlike the EPO and the BA, Prescott QC uses the short-hand “technology” with 
strict reference to Article 52, which contains the list of exclusions including 
computer programs and recognises that “technical” and “technology, although 
useful short-hand, are ultimately limited by Article 52 EPC (in the context of 
determining patentability). The same cannot be said for Mr. Justice Pumfrey’s 
approach in Shopalotto where he unashamedly grabs the loose reigns of the wild 
horse of “technical effect” unleashed by the EPO and BA and proceeds to gallop 
off with it:

    “Suppose a program written for a computer that enables an existing computer 
to process data in a new way and so produce a beneficial effect, such as 
increased speed, or more rapid display of information, or a new type of display 
of information. It is difficult to say that these are not technical effects, 
and, indeed, that the programmed computer, itself a machine that ex hypothesi 
has never existed before, is itself a technical article and so in principle the 
subject of patent protection. The real question is whether this is a relevant 
technical effect, or, more crudely, whether there is enough technical 
effect.”10 

Mr. Justice Pumfrey, with respect, makes the same mistake as the EPO by 
endorsing the old “technical contribution” test (‘enough technical effect’) and 
succumbing to a broad definition of “technical” which fails to recognise that 
what may be considered as “technical” in common parlance does not mean it is 
“technical” for patent purposes (which requires a purposive reference to 
Article 52 EPC). In the context of a computer program, an increase in speed or 
faster display of information or new way of displaying information are not 
“technical” effects because they have no “physical” (technical) manifestation 
but result from the application of computer engineering, an exact science 
(rather than experimentation with changes to natural forces through the 
application of applied sciences). As the 17th senate of the German Federal 
Patent Court said in 2002:

    “If computer implementation of non-technical processes were attributed a 
technical character merely because they display different specific 
characteristics, such as needing less computing time or storage space, the 
consequence of this would be that any computer implementation would have to be 
deemed to be of technical character. This is because any distinct process will 
have distinct implementation characteristics, that allow it to either save 
computing time or save storage space. These properties are, at least in the 
present case, not based on a technical achievement but are pre-determined by 
the chosen non-technical method. If the completion of such a task could be a 
sufficient reason to attribute technical character to a computer 
implementation, then every implementation of a non-technical method would have 
to be patentable; this however would run against the conclusion of the Federal 
Court of Justice that the legal exclusion of computer programs from 
patentability does not allow us to adopt an approach which would make any 
teaching that is framed in computer-oriented instructions patentable.” 11 

The use of “technical features” to justify the granting of patents cannot and 
should not be used without clearly referring back to the exclusions in Art 52 
EPC. However, the broad brush approach of the BA and EPO to “technical 
features”, and now followed by Mr. Justice Pumfrey, is a long way away from the 
EPC exclusions and by allowing everything to be considered as “technical”, the 
distinction between software “as such” and “technical software” or “software 
invention” mocks the purpose of the exclusion of computer programs in the EPC 
so as to effectively render it void. As the German Federal Court put it:

    “any attempt to attain the protection of mental achievements by means of 
extending the limits of the technical invention -- and thereby in fact giving 
up this concept -- leads onto a forbidden path. We must therefore insist that a 
pure rule of organisation and calculation, whose sole relation to the realm of 
technology consists in its usability for the normal operation of a known 
computer, does not deserve patent protection.”12 

A purposive approach

What is the correct meaning of the words “to the extent” and “as such”? 
Finally, law makers rather than technicians are starting to speak up, as 
Prescott QC states:

    “Article 52(3) indicates that a subject-matter is excluded ‘only to the 
extent’ that a patent relates to it ‘as such’…. In the past it has led some 
people to think that you should be able to patent any new, non-obvious idea, so 
long as what is claimed as the invention does not consist only of excluded 
subject-matter. According to that reasoning you could patent an excluded item 
e.g. a computer program by the formal device of claiming some physical artefact 
(e.g. “A magnetic disk in which my program is stored”, or “A computer when 
operating under the instructions of my program”). And indeed if it were just a 
question of interpreting Article 52(3) as if it were an Act of Parliament, they 
might have been right. However, it is not an Act of Parliament, and they were 
not right.”13 

This is a refreshing statement although we have had to wait a long time to hear 
it. The EPO, the BA and all the other sustainers of the “software invention” 
farce are “not right”. You cannot and should not be allowed to subvert the 
purpose of an international convention which contains a clear exclusion on 
patenting computer programs by bestowing on the computer program some, 
physical, and hence non-abstract and tangible, character. For to do so would 
defeat the purpose of the EPC and as Prescott QC comments, the exclusions in 
Article 52 EPC need to be given a purposive interpretation14 and in order to do 
this, we must understand the policy behind the exclusions.

Adopting a purposive approach has two key effects. Firstly, it makes it clear 
that you cannot have “software inventions” because by definition this can only 
ever be software, the invention can only consist of software and perhaps a 
computer or other physical artefact upon which the software is being run…at the 
end of the day this invention exists totally in the sphere of computers and 
software. However, it is submitted, that a purposive approach also allows one 
to satisfactorily deal with hybrid inventions (these are not “software 
inventions, but inventions which have a physical ‘artefact’ or ‘process’ (per 
Prescott QC) that is being claimed and which involve software).

“To the extent” and “as such” –- dealing with hybrid inventions

    “The reason why computer programs, as such, are not allowed to be patented…
. [a]lthough it is hotly disputed now by some special interest groups, the 
truth is, or ought to be, well known…is because at the time the EPC was under 
consideration it was felt in the computer industry that such patents were not 
really needed , were too cumbersome (it was felt that searching the prior art 
would be a big problem ), and would do more harm than good.”15 

With these words, Prescott QC laid bare the argument of the pro-software patent 
lobby. Politicians have short term memories, as do most people who stand to 
make money out of software patents to the detriment of the software industry as 
a whole. The truth, as Prescott QC comments “ought to be known” but it has been 
conveniently forgotten by the pro-software patent lobby. Computer programs were 
excluded from patentability because patents in this area were seen as harmful 
to the IT industry and, this was not intended as a ‘soft’ exclusion but a 
‘hard’ exclusion. As discussed later, the reasoning of our 1970’s forefathers 
holds true today. Given such a clear statement of the public policy reasons 
behind the exclusion on computer programs it is, with the greatest professional 
respect, difficult to understand given that the “truth ought to be known” how 
Mr. Justice Pumfrey could in Shopalotto state that “ it [was] difficult to 
discern any underlying policy” for the computer program exclusion in the EPC. 
This failure to understand the policy reasons behind the exclusion of computer 
programs, leads him to conduct an analysis of patentability in a public policy 
vacuum resulting in a failure to adopt a purposive approach to the EPC and, 
inevitably (in such vacuum), to support the flawed view of the EPO and BA as to 
the words “to the extent” and “as such”.

If, as Prescott QC does, we accept that the EPC excluded computer programs for 
strong policy reasons and that they should not be foreclosed, it is not 
consistent that the phrases “to the extent” and “as such” should infer that 
combining a computer program as part of a thing or process which is patentable 
should render the software also part of the patent and therefore foreclosed. A 
much more consistent interpretation of the effect of these phrases and the 
purpose of the computer program exclusion, is that Article 52(3) was drafted so 
as to deal with the ‘problem’ of preventing foreclosure of a computer program 
(against public policy) in the case of hybrid inventions which included a 
computer program. In order to do this, the most logical choice of words to 
delimit the excluded subject matter from the patentable subject matter would be 
to use the words “to the extent”.

Therefore, in considering whether a thing or process is patentable which 
includes a computer program, the hybrid invention is foreclosed (assuming it 
meets the other patentability criteria) “to the extent” it does not involve the 
computer program as such.

This means that the inventor gets the benefit of the patent for his hybrid 
invention, the presence of the software does not void the application but the 
software itself is not, at a formal level, patented (i.e., foreclosed). In this 
way, the ideas and functions of the software remain free as is necessary for 
public policy reasons (see discussion below) but the tangible, concrete and 
physical thing or process which has benefited from the application of a 
computer program is protected. Prescott QC implied this when he said:

    “the mere fact that a claimed artefact includes a computer program, or that 
a claimed process uses a computer program, does not establish, in and of 
itself, that the patent would foreclose the use of a computer program”.16 

The presence of excluded subject matter should not prima facie prejudice a 
claimed artefact or process which uses the excluded subject matter but if the 
non-excluded subject matter is capable of being patentable, the excluded 
subject matter does not suddenly become part of the patent. “[T]o the extent” 
the now patentable invention includes a computer program, this element is 
excluded from the patent claims and hence is not foreclosed (hence Prescott QC 
does not talk of the ‘claimed computer program’ but instead of the claimed 
artefact or process because the computer program, being excluded subject 
matter, cannot be part of the claim).

The “Little Man” Test

Prescott QC, then goes on to talk about what is now been called the 
“little-man” test which was correctly, in my opinion, being interpreted by the 
hearing officer in the Oracle application.17

    “There are many artefacts that operate under computer control.. and...many 
industrial processes that operate under computer control...The question to ask 
should be: is it (the artefact or process) new and non-obvious merely because 
there is a computer program? Or would it still be new and non-obvious in 
principle even if the same decisions and commands could somehow be taken and 
issued by a little man at a control panel, operating under the same rules? For 
if the answer to the latter question is ‘Yes’ it becomes apparent that the 
computer program is merely a tool, and the invention is not about computer 
programming at all.”18 

In the Oracle application, Oracle tried to apply for a patent of a mark-up 
language translation program by arguing that since what their program was 
implementing was a better way of applying the translation rules and that these 
rules could be applied by a little man, their invention was not to do with 
computer programming (and hence ‘computer programs’). However, this application 
failed and although the hearing officer’s reasoning has been criticised, it is 
submitted that the decision is not only consistent with the EPC but also 
Prescott QC’s reasoning.

Prescott QC, it is submitted, did not intend the “little man test” to be a 
litmus test for whether something is excluded subject matter, i.e. if you pass 
the test you are not within the exclusion of computer programs. His words must 
be taken in the clear context in which they appeared. He was talking about 
hybrid inventions which may involve a computer program, i.e. unlike in Oracle, 
the little man test appears where the program is not the central element (this 
is the claimed artefact or process), but is instead used to assist an examiner 
in considering the new and obviousness limb of Prescott QC’s test. The test 
seeks to clarify that, in assessing newness and novelty, the presence of a 
computer program should not prima facie hinder an application if it appears to 
be the only “new” element, where it is clear that the function that the 
computer program is performing in the claimed artefact or process could be 
performed by a human being and that, the process if “humanised”, is new and 
not-obvious having regarding to the state of the art. If the “little man” test 
is passed, it is the claimed artefact or process which is patented, not the 
computer program involved in the same.

However, the problem is that granting patents to hybrid inventions whilst at 
the same time preventing the foreclosure of software requires the EPO and BA to 
be able to:

        * recognise the public policy behind excluding software programs in the 
first place;

        * not conveniently forget history;

        * not play a formalistic word game with “as such”; and

        * not put their “customers” (mainly non-European customers when it 
comes to software patent applications successfully filed) first by taking upon 
themselves to extend patents to cover effectively software instead of its 
administrative function of upholding the terms of the convention as 
democratically adopted (including its spirit).

Since the CII Directive: (i) did not contain a clear definition of technology 
(recognised now not only by the anti-software patent lobby but also Prescott QC 
when he commented that the Common Position “would have entrenched a test 
involving ‘technical contribution’ and ‘technical features’ that..[was]..too 
vague to be workable at the margin”19 ); and (ii) relied on the “as such” 
definition, because of the EPO’s and BA’s track record on software patents, 
those arguing that the stated aims of the CII Directive had not been met knew 
that to have adopted the CII Directive in the form proposed by the Commission 
and others would have led to the legitimisation of software inventions, the 
patenting of pure software and the foreclosure of software in hybrid inventions 
resulting in an extension of patentability.

With the realisation that the CII Directive would not have achieved its 
commendable aims, those seeking to protect the majority of the IT industry had 
no choice but to try and modify the same to achieve the stated aims. After all, 
as Prescott QC comments, “[d]espite the prohibition on granting patents for 
computer programs as such….the EPO has granted more than 40,000 of them”.20 If 
the EPO could grant 40,000 patents when, in law, they shouldn’t be…imagine if 
they felt the BA’s decisions were being put on a statutory footing.

A missed opportunity

The anti-software lobby wanted the directive to be a clarification of the EPC, 
not an extension. They sought to adopt a purposive interpretation based on an 
understanding that patents are not the divine right of inventors -– public 
policy should dictate what is and is not patentable.

The pro-software patent lobby stated that their aim was also to clarify 
‘existing law’ but as has been noted above, although the Common Position would 
have permitted hybrid inventions involving computer programs, pure software 
would have been patented and also all software in hybrid inventions would have 
been foreclosed, hence creating a result never foreseen by the EPC, against the 
purpose of the EPC, an extension of patentable subject matter and a move 
against public policy as it was then and as it is now.

What we needed, and I think we still need at a European level (although 
Prescott QC has got very close to doing this at the UK level) was to clarify 
how the EPC applied to hybrid inventions involving software, but to do this in 
a way which didn’t rewrite the exclusion of computer programs and result in the 
foreclosure of software. Unfortunately, once the pro-software patent lobby 
realised that we were on the eve of achieving this, they did a u-turn and 
promptly proceeded to kill the directive they had lobbied so hard to achieve -– 
the directive, was in the end not killed by the open source movement although 
this truth, which ought to be known, has failed to be presented “as such”.

Only the hippies

Myth 3: The only interest group protesting about the CII Directive allowing 
software patents through the back door were open source software companies and 
individual developers.

This is a very important myth for the pro-software patent lobby. Often I have 
seen press releases talking about the “open source community” hampering the CII 
Directive without any mention of proprietary software companies also protesting 
about the CII Directive’s substantive effects. The intended purpose of this 
distortion in reporting is clear -- it seeks to polarise the debate as one 
between proprietary software companies (for software patents) and open source 
software companies (anti-software patents and ‘haters’ of intellectual property 
rights). The truth however is very different.

As discussed in the next section, software patents do not discriminate between 
the proprietary and open source sectors -- the damaging effects on innovation 
are the same -- it’s just that in the open source sector the effects are 
compounded by the sheer scale of independent development which is inherent in 
large scale, worldwide, development projects. Software patents affect any 
individual or organisation writing software, regardless of licensing model, 
because they grant monopoly rights to the building blocks of software 
engineering and hence constitute a barrier to anyone writing software, but in 
particular to Small and Medium-Sized Enterprises (“SMEs”).

The big porky

Myth 4: Software patents are good for the IT industry and necessary for 
innovation

    “Most economists have doubts whether economic efficiency, i.e. increased 
overall welfare, is achieved by having or making computer program related 
inventions patentable. This caution is supported by the continuing, indeed 
growing, concern in the USA on the issues surrounding patents on computer 
program related inventions. The debate in the States is not finished.”21 

The above statement was not written by an open source software company. The 
statement was delivered as part of an independent report commissioned by the EU 
Commission prior to introducing the CII Directive. In no uncertain terms, the 
authors highlighted the conclusion that software patents were unlikely to 
produce benefit to our (European) economy and this was a report commissioned by 
the EU whose undertones were particularly conservative. However, within a 
couple of years, certain EU Commissioners would have forgotten all about this 
careful analysis (confirmed by many subsequent studies) and would be trying to 
convince us that software patents are beneficial to our economy.

IPR protect just about every element of a software product, including the lines 
of code, the graphics, the sounds, the front-end text, icons and the general 
look and feel. The missing piece of the jigsaw are the functions of the 
software, which would be protected (or monopolised) if software patents were 
allowed (whether subversively or otherwise). The pro-software patent lobby 
wants us to believe that software patents or “inventions” (as they like to call 
them) are a natural and acceptable progression of the patent system and that 
there is nothing wrong with foreclosing software through the patent system. 
What we are being told is that all these forms of IPR protection are not 
enough; we need stronger IPR in the forms of patents –- developers should be 
given a monopoly over functionality and that this is vital for the continued 
competiveness of the European IT industry. Who is right?

Why have patents?

The purpose of patents is to stimulate innovation by rewarding those who make 
inventions with monopoly rights. However, patents have for decades been only 
granted (in accordance with a purposive approach to the law) for technical 
inventions, i.e. inventions which have a physical effect. This is often 
expressed in different ways in each member state but it is fair to say that, 
drawing from the main concepts, there is a convergence towards the idea that 
the invention must be “technical”, have a “practical form” and “physical” 
effects, represented in some form of apparatus or device. Therefore, in CFPH 
Prescott QC litters his judgement with references to claimed “artefact” or 
claimed “process” and in discussing attempts by ‘special interest groups’ to 
subvert the purpose of Article 52 EPC he refers to them trying to claim the 
abstract computer program together with a “physical artefact”, thus recognising 
that the patentable subject matter is that part which is the physical 
manifestation of the idea. What has historically been protected by patents is 
not ideas themselves, but “a new way of putting an idea to work by using 
controllable forces of nature.” 22

For such technical innovations, society has considered it right that, given 
such inventions often involve a significant amount of experimentation and 
provide benefits to us, we need to encourage inventors by giving them the 
economic incentive of a monopoly right in return for publication of the 
invention and the system used to do this is the patent system. For such 
technical inventions which create a change in natural forces, there is really 
no other suitable intellectual property right which rewards and protects the 
inventor’s time and effort in undertaking such experimentation, which because 
we are in the realm of applied sciences rather than exact sciences (like 
mathematics) can be substantial.

However, ideas (mental thoughts, abstract or logical processes) have not 
historically been patentable as conceiving an idea in one’s mind and even 
expressing that idea in writing does not involve the experimentation on 
physical matter or any technical effect and can happen instantly. We (except 
for the EPO with its vested interests) have not thought it fit to extend the 
patent system to covering intangible ideas, whether expressed on paper or by 
way of a computer program. As Hartmut Pilch of the Federation for Free 
Information Infrastructure (“FFII”) writes:

    “why should it make any difference whether I run [the ideas] in my head, 
with pencil and paper or with the normal tool of today's civilisation, which is 
the universal computer……because the economic rationale behind not granting 
patents on thoughts applies also here: abstract ideas are, regardless of their 
applicability to technical problems, produced without experimentation cost, 
applicable to an infinite range of problems, and replicated at zero cost with 
no overhead to which patent license fees could be added. The division of the 
extra cost of patents by the marginal cost (and long-term ideal price) of 
information goods is a division by zero.”

The patent system was very much designed in relation to physical inventions 
rather than abstract ideas and has worked well in the industrial and 
pharmaceutical sectors. A patent grants the inventor a 20 year monopoly right 
iIn industries which produce technical inventions. This time period has worked 
well in such industries because often the R&D time needed to arrive at an 
invention, such as a new drug, can be very significant and also very expensive. 
In other words, these industries have very long and expensive development life 
cycles. The technology in these industries does not develop rapidly or 
incrementally. If after 4 years of researching a drug, one knows that you can 
have a monopoly right for 20 years to exploit the drug this gives drugs 
companies the incentive to invest in R&D knowing that they can recoup the 
costs. It is the same for an industrial process. The companies involved in such 
sectors are often large companies with money to spend on filing patents and 
defending patent infringement cases which can be incredibly expensive. 23

The role of public policy

As patents for traditional industries may work to generate innovation, an 
invention which produces physical effects, including a hybrid invention which 
involves a computer program, should in theory be patentable (save for not 
foreclosing the software element as discussed above). However, we should not be 
destroying years of carefully thought out legal, economic and scientific 
practice which has focused on granting patents for inventions which result in a 
change to natural forces (i.e. have physical effects) and not computer 
programs. This is a recognition that inventions which result in a change of 
natural forces may take many years to develop and may have a beneficial effect 
on society, hence the need to give inventors an incentive to spend R&D in 
coming up with such inventions. At the very core of patent law there is a 
balance between protecting the rights of an individual inventor and those of 
society. As Peter Prescott QC commented:

    “There can be but one justification for having a patent system, and that is 
that it is good for the people of the country. If the patenting of certain 
things does more harm than good, it matters. Patents that are wrongly granted 
can be very expensive to challenge and may deter small and medium 
enterprises.”24 

Patents grant monopoly rights. Anyone who has studied economics knows that 
monopolies are not good for competition:

    “A patent system is always a burden on trade, commerce and industry: if 
only because of the “red tape” effect. The only question is whether the 
benefits outweigh the burdens.”25 

In fact, much of the history of European integration has been based in creating 
a level playing field in industry by breaking down the negative effects of 
monopolies so it is quite ironic that the EU Competiveness Council could 
introduce a directive which would have led to a damaging economic monopoly. 
Prescott QC is bold enough to admit that patents are not the divine right of 
inventors but are only granted where they benefit society. It is the citizens 
of Europe who have the ultimate say in whether we should extend patentability, 
represented through its democratic institutions and not the powerful voice of 
minority special interest groups.

There is no doubt that in some fields, society benefits from the patent system 
because, for fields of technology where the development life cycle is very 
protracted, expensive and involves a new industrial process, without a system 
such as patents it would be very difficult to encourage companies to undertake 
such expensive research and commit the time to developing such new processes 
(which benefit society) if they did not have the economic security of patents 
(i.e. a monopoly). In a field such as the drugs industry, where drugs may take 
many years to develop, a 20 year monopoly on a drug sounds reasonable. However, 
in software terms, a 20 year monopoly is a lifetime. Furthermore, even if the 
patent system was amended for software patents (e.g. by shortening the period 
of the monopoly right), it is submitted that the patent system as a system for 
protecting and encouraging software innovation is fundamentally flawed.

Do patents work in the software industry?

Traditionally, it has always been understand that the patent system was not 
appropriate for software. Prescott QC referred to the reasoning at the time of 
the EPC was drafted and that it was felt “such patents were not really needed, 
were too cumbersome and would do more harm than good”. 26 This “history” is 
being forgotten but has the position really changed? In 1994, at the USPTO 
hearings on software patents a certain software company made the following 
statement:

    “software per se should not be allowed patent protection…. [We have] built 
[our] business by creating new markets with new software. We take this position 
because it is the best policy for maintaining a healthy software industry, 
where innovation can prosper.

    [...]

    when we….founded a company on the concept of software to revolutionize the 
world of printing, we believed that there was no possibility of patenting our 
work. That belief did not stop us from creating that software, nor did it deter 
the savvy venture capitalists who helped us with the early investment. We have 
done very well despite our having no patents on our original work.

    On the other hand, the emergence in recent years of patents on software has 
hurt [us] and the industry. A "patent litigation tax" is one impediment to our 
financial health that our industry can ill-afford. Resources that could have 
been used to further innovation have been diverted to the patent problem. 
Engineers and scientists such as myself who could have been creating new 
software instead are working on analyzing patents, applying for patents and 
preparing defenses. Revenues are being sunk into legal costs instead of into 
research and development. It is clear to me that the Constitutional mandate to 
promote progress in the useful arts is not served by the issuance of patents on 
software”.

Who said the above, was it a small time developer or an open source giant? No, 
this comment was made by one of the largest proprietary software companies of 
its time, Adobe. This was 1994: perhaps things have changed in the 21st 
century? At the US Federal Trade Commission’s hearings on the anti-competitive 
effects of patents held in 2002, Bradford L. Friedman, Director of Intellectual 
Property at Cadence Design Systems, Inc commented:

    “As I'm sure this committee is aware, there is a general animosity to pure 
software patents within and outside of the industry due to, one, the perceived 
allowance of what I'll diplomatically call overbroad patent claims, and two, 
the historically non-proprietary culture of the software engineering industry. 
In sum, largely because the current patent system is poorly fashioned for the 
software design tool industry, the industry has evolved to minimize the impact 
that patents have on competition and has relied on other more market-oriented 
drivers of innovation.”

A computer program, i.e., the lines of code, mathematical models etc are all 
intangible and a computer program, on its own, does not produce any change in 
natural force (i.e. it does not have a physical effect). Software is an 
“intellectual creation”. As noted above, Article 52(2) of the EPC expressly 
excludes “computer programs” from being patentable. However, computer programs 
are protected by copyright, an automatic intellectual property right (there is 
no need to apply for copyright) which protects the expression (i.e. the code) 
of a programmer’s ideas from being copied by others. Copyright does not, 
however, seek to protect the ideas (features or functionality) behind a 
software program. As Prescott QC comments:

    “As was pointed out by Laddie J in Fujitsu Limited’s Application [1996] RPC 
507, 530, the items listed in Article 52 were excluded for reasons of public 
policy. This is obvious, for instance, in the case of ‘aesthetic creations’ – a 
literary work, say. Such things are to be protected, if at all, under copyright 
law. Not only does copyright law refuse to protect a general idea, it freely 
allows the publication of similar works if there has been no copying. Imagine 
what would happen if literary works could be protected by patent. Literary 
creativity would tend to be stifled, and authors would have to conduct patent 
infringement searches before the expiry of their copy-deadlines.”27 

You could read “computer programs” where you read “literary works”, for the 
effects are exactly the same. Prescott QC can see the negative affects of 
patenting literary works, including how this would affect innovation. However, 
although computer programs are written works which are generally processed by a 
machine but could be read in source code form, many people fail to see the 
blinding similarities between the dangers of trying to patent a story plot and 
the lines of code or functionality of a computer program.28

The result of the copyright system is that another programmer can come along, 
study the ideas of a computer program and write a better program based on these 
ideas that does not necessarily infringe copyright. If the software was 
patented, he could not do this without the risk of facing a patent infringement 
suit because patents protect the underlying ideas. Copyright protects the hard 
work and investment made by individuals and companies by protecting the 
expression of the ideas and has allowed businesses to write extremely 
profitable software and led to a very strong IT economy in Europe. However, it 
has also allowed millions of developers to come up with better ways of 
achieving the same functionality for a specific business process (thus 
benefiting consumers with more choice and better products) without having to 
fear being sued for patent infringement because someone owns a patent to a 
technique, functionality or business process achieved by software. Therefore, 
copyright has allowed the software industry to flourish, generate numerous new 
products quickly (without having to worry about patent searches etc) and 
ultimately benefited consumers. The enforcement of copyright is also much 
cheaper than enforcing patents, which helps to protect the majority of the 
software industry, SMEs. The way copyright works suits the way the software 
industry and software development works. Not every industry is the same and 
patents are not suited to the software industry; copyright is (or is at least 
better suited).

The software industry differs markedly from other industries which benefit from 
patents. The software development life cycle is much shorter than other 
industries and the costs of R&D and development are much smaller. The way 
software is also developed is important -- software developers have 
traditionally developed software in an incremental process and the majority of 
today’s software is built on the ideas of previous developers.29

“Software clearly differs from other industrial computer products in that it 
evolves on the basis of pre-existing ideas. This process of open sourcing, 
which has enabled innovation in the sector to thrive, would become almost 
impossible under a patenting system.”

The Commission on Intellectual Property Rights concluded in its final report in 
2002:

    “The patent system fits best a model of progress where the patented 
product, which can be developed for sale to consumers, is the discrete outcome 
of a linear research process. The safety razor and the ballpoint pen are 
examples, and new drugs also share some of these characteristics. By contrast 
in many industries, and in particular those that are knowledge-based, the 
process of innovation may be cumulative, and iterative, drawing on a range of 
prior inventions invented independently, and feeding into further independent 
research processes by others. ... The development of software is very much a 
case of building incrementally on what exists already. Indeed, the Open Source 
Software Movement depends precisely on this characteristic to involve a network 
of independent programmers in iterative software development on the basis of 
returning the improved product to the common pool.”30 

This view was reiterated in a report prepared by Deutsche Bank in 2003:

    “[O]ne could be tempted to consider ever stricter IP protection regimes to 
provide ever more stimuli for innovation.

    This conclusion is wrong, however. A prime example is patents on software, 
which might at first sight be seen as a logical expansion of the classic 
technology patent. But creating software differs markedly from creating 
machinery and the like: MIT researchers Bessen and Maskin argue that innovation 
in software is both strongly sequential (one invention building on a previous 
one) and complementary (thriving on parallel approaches to the same problem), 
far more so than in other technology fields. In fact, they found empirical 
evidence that software patenting substitutes R&D activity, rather than 
encouraging it, and conclude: For industries like software or computer, there 
is actually good reason to believe that imitation becomes a spur to innovation, 
while strong patents become an impediment. In accordance with other academics, 
they strongly favour copyright over patent protection for software. 
Copyrighting provides both adequate leeway for sequential innovation and enough 
protection for marketable software products.”31 

Follow the yellow brick road -- only if you pay a toll

Software is written to solve a “problem”. You could argue that the “problem” is 
the functionality, feature or method achieved by the software. The difference 
with software is that there are many ways in which the same “problem” can be 
solved by writing the software in a different way. Now in a patent system, the 
“problem” itself can be patentable. This means that once one person has 
patented the “problem” with a piece of software, no other person can write a 
piece of software (even though the software may be completely different and not 
have one line of code the same) without obtaining a patent licence. However, 
the whole industry revolves around the rapid evolution of software. Being able 
to write different software to solve the same problem leads to better software; 
if this is prevented or restricted, the result in less innovation, poorer 
products, less choice for the consumer and less competition (which normally 
means higher prices for consumers and businesses). There are many paths to the 
same destination. Some are more hazardous than others. With software patents 
you gain a monopoly over the destination turning a free motorway into a toll 
road. What is worse is that not only do you have to pay to get to the 
destination but you are prevented from reaching the destination by exploring 
different paths to the toll road even though they may be quicker, more 
efficient and less costly.

Defeating the purpose of patents

Monopolies are in most economic circles considered as ‘bad’. A huge effort has 
been undertaken within the EU to remove barriers to trade created by 
monopolies. If a monopoly is to be granted for the implementation of an idea, 
it should only be done when there is a clear economic benefit to society in 
doing so. If the granting of patents in a certain field does not encourage 
innovation then the purpose of patents (as far as society is concerned) is 
defeated. On software patents, the balance of opinion is that in the software 
industry software patents have the reverse effect.

The Liberal Democrats in the UK firmly recognise the negative effect of 
software patents:

    "we…..recognize that there are circumstances in which protection systems 
can have the contrary effect of stifling creativity against the public 
interest. We are especially concerned about the use of patents in the area of 
computer software in this respect.

    There are usually many ways to achieve the same objective using computer 
code. The public benefits from the fact that different teams of programmers 
will work on solving problems and release their separate solutions as 
competitors in the market. The specific code each team has written is protected 
by copyright. Allowing a wide definition of inventiveness for patents in the 
field of software could lead to a reduction in this creative activity. This 
might be justifiable if there were evidence that the software industry as a 
whole were suffering because of an inability to secure revenue for research and 
development but there is no evidence that this is the case as the sector 
remains vibrant and growing."32 

However, what better source of evidence then the US whose software industry has 
had to live with software patents for over 10 years? The internationally 
respected Federal Trade Commission carried out in October 2003 a detailed 
industry study into patents. Its conclusions, in relation to software, make 
fascinating reading:

    “The software and Internet industries generally are characterized by five 
factors: (1) innovation occurs on a cumulative basis; (2) capital costs are 
low, particularly relative to the pharmaceutical, biotechnology and hardware 
industries; (3) the rate of technological change is rapid, and product life 
cycles are short; (4) alternative means of fostering innovation exist, 
including copyright protection and open source software; and (5) the industries 
have experienced a regime change in terms of the availability of patent 
protection. Panelists consistently stated that competition drives innovation in 
these industries. Innovation is also fostered by some industry participants' 
use of copyright protection or open source software. Several panelists 
discounted the value of patent disclosures, because the disclosure of a 
software product's underlying source code is not required.

    Many panelists and participants expressed the view that software and 
Internet patents are impeding innovation. They stated that such patents are 
impairing follow-on incentives, increasing entry barriers, creating uncertainty 
that harms incentives to invest in innovation, and producing patent thickets. 
Panelists discussed how defensive patenting increases the complexity of patent 
thickets and forces companies to divert resources from R&D into obtaining 
patents. Commentators noted that patent thickets make it more difficult to 
commercialize new products and raise uncertainty and investment risks. Some 
panelists also noted that hold-up has become a problem that can result in 
higher prices being passed along to consumers.” 33 

The Government in its conclusions regarding the Patent Office’s Consultation 
Document of 01 November 2000 (“Should Patents be Granted for Computer Software 
or Ways of Doing Business?”) concluded in relation to the relationship between 
patents and innovation in the software industry:

    “The Government is sympathetic to many of the points made by those 
concerned about the impact of patents. There is a vast amount of innovative 
software development taking place without patent protection at present (though, 
like all software, it is protected by copyright against direct copying). Much 
of it is being carried out by individuals and SMEs. To extend patentability so 
that these developers have to divert time and effort into making sure they are 
not infringing patents, and seeking and enforcing them, would impose a major 
burden. The necessary case for believing that a significant extension of 
patentability would increase innovation in this field simply has not been made. 
In fact, as many respondents suggested, it could have the opposite effect.”34 

The rise of the software industry in a patent free world

For 30 years, Europe lived without software patents. What happened in this 
period? We saw the rise of a great software industry, the birth of the internet 
and e-commerce, thousands of software products (and the rise of Free and Open 
Source Software (“FOSS”)). The Internet has enriched all our lives but had 
there been software patents in place at the time of its inception, it is very 
unlikely that we would have achieved so much. Many forget that the Internet has 
been built on open standards:

    “Of course the main internet interfaces are open, based around freely 
available published standards that are not under the control of any one company 
or industry body.”35 

We should all take note that the father of the world wide web, Tim Berners-Lee, 
is a vocal opponent of software patents. Do we really think that the idea of an 
electronic shopping cart should be monopolised to the tune of US$40,000,000? 
This is what Amazon has had to pay to secure the continued use of its 
e-commerce platform in the US this year.36 It would not need to pay this in 
Europe. Imagine every other e-commerce vendor in Europe who uses an electronic 
shopping cart. Would they have the funds of Amazon to be able to negotiate a 
patent settlement with the company that sued Amazon? Perhaps this is not an 
example close to lawyers' hearts. What about a rather fruity story turned sour 
with a disputed settlement of US$450,000,000? This is the cost (although the 
saga is still running) that the makers of the Blackberry handheld e-mail 
device, Research in Motion (“RIM”), offered to NTP, an American software 
company, to make NTP stop its patent infringement claims based on very wide 
software patent claims successfully obtained by NTP in the US. The latest in 
this long-running battle, is that RIM could end up being forced to shut down 
its US operations37 -– that's right, NO BLACKBERRY. Do not fear though; thanks 
to the desire of some within Europe to preserve innovation rather than 
profiteering from the monopolisation of intellectual processes, you can still 
continue to get your daily dose of thumb arthritis and access to your office 
e-mails. This wonderful business tool is alive and well in Europe because, you 
guessed it, we have resisted a move towards a US-style system of software 
patents. Even if the little berry wins, though, the sheer cost of fighting such 
a battle will have hurt RIM's balance sheet, its investors and, if it is forced 
to pay an even higher settlement, the battle may ultimately hurt the wallet of 
business users. These are just a couple of examples from the software patent 
horror show illustrating how software patents affect companies’ bottom line, 
hurt innovation and ultimately affect us, the consumers.

Did the absence of patents prevent innovation? Absolutely not. Software 
companies knew that they could, as developers had been taught, study the ideas 
and industry programming techniques and, provided they did not steal someone 
else’s expression of those ideas, write a program without the fear of being 
sued for patent infringement. Developers knew that as long as they created an 
“independent” work, they would potentially stand to profit from it. There was 
no need to do exhaustive searches of patent applications, nor a danger of being 
liable for patent infringement for using a technique which you had 
independently created. It is in this environment that FOSS has flourished.

FOSS: a benefit for all

FOSS often relies on thousands of developers from all over the world 
contributing to a software project. FOSS projects, as a result, have very fast 
development times. Not only this, the products are normally very stable because 
they have such a huge testing base. FOSS, which is often free to purchase or 
where the costs of purchase are very much reduced, is being used in schools,38 
hospitals,39 local authorities, small businesses and large corporations. It is 
giving technology to the masses and is vital for the development of the third 
world. For many small businesses, it allows them to keep their costs down and 
focus on delivering products to their customers at reduced prices because FOSS 
lowers the cost entry barriers. Ultimately, FOSS is helping not-for-profit 
bodies, government bodies and most importantly, everyday citizens to harness 
the full benefits of technology and software at little or no cost.

Damaging FOSS would be to damage a market model which lowers costs whilst 
increasing productivity. The “open source” business methodology has huge 
potential not just in software but in other business fields,40 allowing for 
innovation to take centre stage through collaborative research projects and 
harnessing the input of the many in an open rather than closed environment. A 
hammer blow for FOSS could terminate this embryonic alternative business model.

If we allow in Europe, through careless drafting or otherwise, software 
patents, this may destroy the FOSS movement and with it much software 
innovation. This is not an exaggeration. If each and every developer from 
around the world contributing to a FOSS project is not free to use the ideas 
behind software programs, or a technique or feature because it is patented, the 
fundamental building blocks of software development will have been taken away 
from them. Furthermore, the fear of patent infringement may mean that many 
developers will not be able to contribute to FOSS projects because of the huge 
expense of defending a possible patent infringement claim. Even if they tried 
(which would take time and therefore take away from development time) to carry 
out a search of patent applications they would not necessarily understand if 
they were infringing a patent because patent claims are written “in a foreign 
language”, full of legalese and it can be unclear as to what is covered or not 
by the patent. These small developers, who have made a massive contribution to 
FOSS software, have not got the time or money to pay expensive lawyers to 
determine whether they fall within or outside of a particular patent.

A thorn in the side of innovation

What is known by millions of businesses in Europe is that software patents are 
bad for the software industry as a whole. Even the UK Patent Office, which 
carried out a consultation on software patents and business method patents 
received an overwhelming response, which its conclusions noted, that software 
patents did not necessarily result in more innovation but could have the 
reverse effect. If software patents are allowed, US and Japanese companies will 
immediately proceed to register patents in Europe to match their US patents 
(many of which have a dubious legal basis) and which represent the obvious 
building blocks and techniques of software developers which in a patent free 
world have been capable of being used by everyone free of charge for the 
greater good of the software community and ultimately consumers. Once 
registered, no doubt a string of lawsuits or requests for royalties will be 
made against IT SMEs, which form the backbone of the software development 
industry in Europe, resulting in many being made bankrupt or having their 
profit margins slashed with the consequence of lower investment and development 
for the future (hence less innovation).

A knock on consequence will be SMEs having to divert away resources from 
development to having to investigate patents before development work can be 
undertaken and also having to defend patent infringement claims. This will mean 
less development time, greater time to market of products, greater TOC (Total 
Cost of Ownership) and ultimately less innovation. This is not a claim without 
substance for it is exactly what has happened in the US. In 2002, at the FTC 
hearings on the effects of patents on innovation, the CEO of Divx Networks, R. 
Jordan Greenhall talked about the frustrations of one of his lead developers 
trying to work out whether one of their technologies infringed another patent:

    “The poor guy spent the better part of five days examining all these 
different patents and came back to me saying, "I haven't the slightest idea 
whether or not we infringe on these patents, and frankly, they all seem to 
infringe on one another." The end result being that I have no idea whether my 
product infringes on upwards of 120 different patents, all of which are held by 
large companies who could sue me without thinking about it. The end result, 
much like Borland, I have now issued a directive that we reallocate roughly 20 
to 35 percent of our developer's resources and sign on two separate law firms 
to increase our patent portfolio to be able to engage in the patent spew 
conflict. I think the concept here would be called saber rattling. I need to be 
able to say, "Yeah, I've got that patented too, so go away and leave me alone.”

The software industry has thrived without patents, with numerous products 
developed quickly because developers do not have to worry about obtaining 
patent clearance for the numerous techniques they use in writing a program. 
This did not go unnoticed for Prescott QC who commented:

    “it is worth noting that the software industry in America developed at an 
astonishing pace when no patent protection was available.”41 

Under a software patent system, these techniques will no doubt be patented in 
Europe because of the EPO approach to allowing software patents and will result 
in the US style system where the very building blocks of normal software 
development are ring fenced by the big corporations, which have the resources 
enabling them to spend time and money to file hundreds of patent claims and in 
the process laying stake to the very core of a developer’s usual toolkit and 
preventing developers (without having to pay hefty licensing fees) from 
developing innovative and better products. Even Japan, a historic supporter of 
software patents, has started to realise that they may not be the right way 
forward and could deter future innovation.42

A defensive battle -- the patent shield

However, once we accept a patent system for software, it will become very 
difficult to get out, for companies will have no choice but to try and get 
patents and built up a patent shield –- this is referred to as defensive patent 
filing and is prolific in the US:

    “There is absolutely no evidence, whatsoever -- not a single iota -- that 
software patents have promoted or will promote progress.

    [...]

    The company for which I am speaking, Autodesk, holds some number of 
software patents and has applied for others -- which, of course, remain secret 
under current U.S. law. However, all are defensive -- an infuriating waste of 
our technical talent and financial resources, made necessary only by the 
lawyer's invention of software patents.

    Autodesk has faced at least 17 baseless patent claims made against it and 
has spent over a million dollars defending itself, with millions more certain 
to pour down the bottomless patent pit unless we halt this debacle. Fortunately 
-- unlike smaller software producers -- we have the financial and technical 
resources to rebuff such claims. We rebutted all but one of the claims, even 
before the patent-holders could file frivolous law-suits, and will litigate the 
remaining claim to conclusion. Note that [the USPTO] has issued at least 16 
patents that we have successfully rebutted, and we never paid a penny in these 
attempted extortions that [the USPTO] assisted. But it was an enormous waste of 
resources that could have better been invested in useful innovation. These 
unending baseless claims benefit patent lawyers, but they certainly do not 
promote progress.”43 

So after you have built up your own “patent thicket”, you have a shield with 
which to defend oneself from patent attacks. Therefore, several of the American 
IT giants that got on their knees to the USPTO in 1994 to ask them not to allow 
software patents have, after over 10 years of building up their shield (at 
considerable cost and at the expense of development budgets, hence innovation) 
less of a resistance to them. However, this cannot be said for every single new 
entrant or for all the existing European SMEs who do not have such a shield 
(and who represent the majority of the IT industry in Europe).

Will Europe benefit from software patents?

Who will be the main beneficiaries of a EU patent system where software patents 
are allowed (whether expressly or through bad drafting and/or EPO policy)? Will 
it be the millions of small IT companies in Europe, the European economy or the 
citizens of Europe? No, the beneficiaries of having software patents or an 
unclear community patent regime will be the US and Japanese economies and the 
few large IT corporations (most of which are not European owned). Having 
software patents will go against the very intention of the statements made by 
Viviane Reding, European Commissioner for Information Society and Media, to 
increase research and innovation in the European ICT sector and the statements 
from the policy consultation document for 2010i strategy:

    “For content in general, the EU should use a copyright system instead of a 
patent system but not one that will restrict user rights.”44 

For the big IT companies, software patent thickets are built up and cancelled 
out through cross-licensing arrangements. So what is the actual benefit, as 
clearly innovation is not the winner? Well, it is the fact that the big 
companies with large software patent portfolios can keep out of the market new 
entrants and small companies by threatening or actually suing them for patent 
infringement. In other words, actually destroying future innovation and market 
choice. As you may recall HP, Microsoft and Apple all had very humble origins. 
A software patent system is potentially threatening the birth of another giant 
which could bring innovation and better products to Europe’s citizens.

If we are clumsy and let those who do not have Europe’s best interests push 
through the EU institutions a community patent regime which ushers in software 
patents in Europe (on a legal footing), we will no doubt be driving a stake 
straight through the very heart of information technology innovation in Europe.

A return to a public policy centric view –- wishful thinking

There does finally appear to be a long overdue backlash, if not limited, to the 
relentless march of intellectual property rights to the detriment of society 
and the global economy. Apart from the vocal opposition to the CII Directive, 
in the UK, the historic Royal Society for the encouragement of Arts, 
Manufactures & Commerce has recently published the “Adelphi Charter on 
Creativity, Innovation and Intellectual Property” (the “Charter”). The Charter 
calls on governments to, inter alia, adopt a public interest test in 
considering new laws on intellectual property requiring “a balance to be struck 
between the monopoly rights implicit in intellectual property laws and the free 
competition that is essential for economic and creative vitality.” 45 As noted 
above, the Japanese government is also starting to question the effect of 
software patents on innovation.

The role of SMEs

Myth 5: SMEs support software patents

The upholding of this myth in the run up to the CII Directive was critical to 
those either openly, or through the promotion of the Common Position, 
championing software patents. Why? Well, there are two reasons; before and 
during the debate, it has been almost universally documented that software 
patents have a negative effect on SMEs (as noted above). Secondly, and this is 
less known, it is not Microsoft or IBM and the like that are the key to the 
European IT industry; it is the thousands of IT SMEs which make up the majority 
of the European IT industry. More importantly, and central to the whole patent 
debate, it is the SMEs which are the key drivers of innovation (and hence 
prosperity and development) in Europe. However, this is not just my conclusion; 
this is the conclusion of those responsible within the European Union for 
driving innovation in the high-tech sector:

    “Small and medium-sized enterprises (SMEs) play a crucial role in European 
competitiveness and job creation, not only because they represent the 
overwhelming majority of enterprises in Europe, but also because they are the 
source of dynamism and change in new markets, particularly those at the leading 
edge of technology”.46 

If innovation is truly the reason why the pro-software patent lobby want 
software patents (which I doubt), they have a fundamental hurdle to overcome. 
The key group within the IT sector, SMEs has been shown time and time again to 
suffer most from the introduction of software patents and since they are the 
driver of innovation, a negative impact on SMEs results in the stifling of 
innovation. Hans-Werner Müller, the Secretary General of the UEAPME, an 
organisation which represents 11 million small businesses, had the following 
stark view of what the CII Directive in the form proposed by the Commission et 
all meant for European SMEs:

    “This directive will threaten the existence of many small businesses if 
passed in its present format.” 

40,000 and counting…

Myth 6: Europe has over 40,000 software patents and the IT industry continues 
to thrive

This is a classic and particularly misleading argument used by the pro-software 
patent lobby. They argue that the EPO has granted 40,000 plus “software 
invention” patents and point to how the European IT industry has grown in this 
time, the upshot of their argument being that patents don’t affect innovation. 
This is an incredibly misleading argument. The negative effect that software 
patents have on the software industry has not yet manifested itself in Europe 
precisely because of the dubious legality of the software patents granted by an 
administrative body, the EPO. For software patents to work their destructive 
magic, they must be no doubt as to their legal status yet in Europe not one 
software patent has been successfully enforced. Therefore, without “legal bite” 
in Europe (compare this to the US situation of the very real threat of triple 
damages for infringement) these software patents have been worthless pieces of 
paper -- they would have become very valuable had the Common Position been 
accepted since the EPO’s unlawful extension of the patent system would have 
received the formal seal of approval -- which could not be used by IT companies 
to demand licence fees and/or block new entrants to the market. On the other 
hand, where such pieces of paper have legal value, e.g., the US, the concerns 
of those against software patents have all materialised and continue to get 
worse and worse every day the current system is not amended.

Tripping us up

Myth 7: TRIPS and article 27

An argument used frequently to convince us that we have no choice to accept 
software patents is that TRIPS requires us to allow patents for all fields of 
technology. However, this argument is fundamentally flawed for it requires us 
to accept that “technology” includes software. As noted above, software is not 
“technology” for patent purposes and is expressly excluded from the scope of 
patentable inventions in Article 52 EPC. The weakness of this argument was 
recognised by the Comptroller General of the UKPO as far back as 1997:

    “Some have argued that the TRIPS agreement requires us to grant patents for 
software because it says "patents shall be available for any inventions.....in 
all field of technology, provided they are.....capable of industrial 
application". However, it depends on how you interpret these words.

    Is a piece of pure software an invention? European law says it isn’t. Is 
pure software technology? Many would say no. Is it capable of "industrial" 
application? Again, for much software many would say no.

    TRIPS is an argument for wider protection for software. But the decision to 
do so should be based on sound economic reasons. Would it be in the interests 
of European industry, and European consumers, to take this step?”47 

From the evidence before us, be it economic or, more importantly the immoral 
nature of monopolising abstract intellectual processes, the verdict is clear. 
It would not be a benefit to extend “technology” for patent purposes to cover 
software. It would not benefit European business or its citizens.

Europe as a leader or as a servant?

If we investigate many of the pro-software patent associations claiming to be 
acting for the software industry, many are either directly or indirectly funded 
by a small number of very powerful (and non-European) IT companies whose track 
record on open market politics is not impressive. These companies are extremely 
large organisations, which have struggled to innovate against much leaner SMEs 
and, their religious zealotry for software patents is ultimately a recognition 
that they cannot survive in an open market but instead need to close the market 
down through the monopolisation of the ideas behind software engineering. 
Allowing software patents in Europe would open the door to the continued land 
grab of software ideas by such non-European corporates and legitimise the 
40,000 plus software patents already granted by the EPO for the benefit of the 
non-European IT giants at the expense of the majority of the European IT 
industry.

The bottom line for IT lawyers

Software patents will only advantage a small group of the largest (and in the 
minority) IT companies. As IT lawyers, how many of us can say that we have such 
clients on our books? The bread and butter for IT lawyers are IT SMEs –- for 
such clients, patents are not the solution but the problem. The legitimisation 
of software patents across Europe would make patent agents better off, as well 
as certain IP lawyers. However, the long-term picture is very different. 
Software patents increase the barriers for new entrants, your future client 
base, and potentially the next Microsoft or Apple (neither would have been able 
to grow so impressively if a patent rich environment had existed in the early 
80s). Furthermore, they put at risk the very well-being and profitability of 
your existing clients. Patent litigation is extremely expensive. Dealing with 
patents takes away time from creating innovative applications that generate 
revenue . With fewer innovative products, the full creative potential of a 
client may not be realised and if its growth is hindered through lack of 
innovation or if they are ruined through patent litigation, you are likely to 
miss out on the long-term benefit of a consistent and, potentially increasing, 
revenue stream. What is worse is that the effect of patents is to lead to a 
grouping of ideas with an ever decreasing pool of companies resulting in a move 
towards monopolisation and fewer but bigger IT companies (which means less 
clients to go round). Finally, as a consumer of software (which all law firms 
are), IT costs are likely to increase through less choice, less innovation and 
less competition and potentially higher prices. Food for thought?

“Let us stand on each others' shoulders, rather than on each others' toes” 48

Ultimately we have to ask ourselves what kind of software industry we want in 
Europe. Do we want an industry dominated by a group of companies, maybe even a 
couple of hundred companies, who have the resources or desire to carve up the 
building blocks of software engineering where control and monopolisation 
through patent revenues becomes more important than innovation, or do we want 
the software industry we have now in Europe, where developers are free (without 
copying code) to work with these building blocks to create innovative software 
products for the benefit of Europe as a whole.

With the Community Patent, we have an opportunity to get involved in 
determining which path we choose, the toll road or the freeway. There remains a 
need to clarify the position on software patents in a way which does not damage 
the European IT industry. A good starting point, which has already considerable 
cross party support amongst MEPs, is the 21 amendments proposed to the Common 
Position by Mr. Rocard (ex-prime minister of France), Mr. Buzek (ex-prime 
minister of Poland) and Andrew Duff (UK Liberal Democrat MEP).49 The Common 
Position as amended by such amendments would have helped rein in the EPO and 
protected our industry from unnecessary damage.

Copyright or wrong?

The real challenge for IT lawyers and the rest of the industry should be 
looking at ways we can address the problems (yes there are some problems) with 
the copyright system rather than putting our weight behind a patent system 
which hinders rather than fosters growth in the industry we work in. Although, 
copyright reform is a subject for a whole article in itself, one possible 
reform would be to create a European registry of software to allow copyright 
owners to deposit their works at a European level. This would not be intended 
to change the substantive laws on how copyright arises but would aid certainty 
and serve as formal evidence of the existence of such rights. Such a register 
would not be compulsory but optional. This type of registry exists at a 
national level in Italy and functions on exactly the basis outlined above.

I leave the final word to someone who is in a better position than I to 
understand the damaging effects of software patents on the software industry, 
Ron McQuaker, a recognised figure in the British computer industry and past 
president of the British Computer Society who, commenting on the negative 
effects of software patents, concluded:

    “These considerations lead me to the view that a properly applied copyright 
regime is much more appropriate to the protection of Intellectual Property in 
programs than patent. You can only breach copyright by doing something morally 
wrong, i.e. copying, and copyists know whether they have done so or not. The 
case for grants of monopoly by patent looks to some people rather like an 
example of pulling up the ladder behind them by the big battalions.”50 

1 The High Court cases where: (1) IN THE MATTER OF Patent Applications GB 
0226884.3 and 0419317.3 by CFPH L.L.C. [2005] EWHC 1589 (Pat); (2) Halliburton 
Energy Services Inc v Smith International (North Sea) Ltd and others [2005] 
EWHC 1623 Pat; (3) IN THE MATTER OF Patent Application GB 0017772.5 by 
Shopalotto.com Limited, [2005] EWHC 2416 (Pat); and (4) IN THE MATTER OF UK 
Patent Application no.GB0108683.4 in the name of Cecil Lloyd Crawford (2005), 4 
November 2005. For the hearing officer’s decision, see the decision O/255/05, 
in the application by Oracle Corporation on 14 September 2005. The UKPO patent 
notice can be found at

2 Per Stephen Kinsella, writer, US patent attorney and IP lawyer. For further 
details see

3 Per James Boyle, Professor of Law, Duke University cited in The Economist, 
“Free Ideas”, 13 October 2005.

4LobbyControl and Corporate Europe Observatory wrote to Commissioner Siim 
Kallas on 28 June 2005. See for further details.

5 Paragraph 56 CFPH, emphasis added

6As Prescott QC comments in paragraph 14 CFPH with reference to the word 
“technical”, “it should be remembered that it was not used by the framers of 
the Patents Act 1977 or the European Patent Convention when they wanted to tell 
us what is or is not an ‘invention’”.

7For a good list of such software patents see

8 Paragraph 45 CFPH, emphasis added

9 Paragraph 97 CFPH

10 Paragraph 9 Shopalotto.

11 BPatG Error Search 2002/03/26. Emphasis added

12BGH 1976-06-22: Dispositionsprogramm. Emphasis added.

13 Paragraph 25 CFPH, emphasis added.

14 As Prescott QC commented at paragraph 27 CFPH, “the Convention is expressed 
in three languages, all equally authentic. It is therefore not surprising that 
the methods of interpretation to be applied to such an international instrument 
are not the same. In particular, there is more room for a teleological 
interpretation.”

15 Paragraph 35 CFPH, emphasis added.

16 Paragraph 104 CFPH, emphasis added.

17 Ibid. footnote 1

18 Paragraph 104 CFPH.

19 Paragraph 37 CFPH.

20 Although Prescott QC uses ‘as such’, he makes it clear earlier in his 
judgement that he doesn’t approve of excluded subject matter being patentable 
by claiming some form of “physical” artefact and that “technical” has to be 
construed with reference to Article 52 EPC

21 Report to the European Commission by Robert Hart (Independent Consultant), 
Peter Holmes (School of European Studies, University of Sussex) and John Reid 
(IP Institute) on behalf of Intellectual Property Institute, London 24 July 
2001. Emphasis added.

22 Per Hartmut Pilch, FFII.

23 Amazon’s profits were badly hit this year paying US$ 40,000,000 in relation 
to a patent claim (relating to software!). See

24 Paragraph 11 CFPH, emphasis added.

25 Per Prescott QC at paragraph 35, CFPH.

26 Paragraph 35 CFPH, emphasis added.

27 Paragraph 30 CFPH

28 For a good article comparing the patenting of software to the plot of books, 
see Richard Stallman’s article on Guardian Online entitled, “Patent Absurdity”, 
20 June 2005,

29 UEAPME 27 April 2005 press release. The UEAPME is an industry body 
representing over 11 million SMEs. Emphasis added.

30 See

31 See

32 See the Liberal Democrats IT policy document at . Emphasis added

33 “To Promote Innovation: The Proper Balance of Competition and Patent Law and 
Policy”, A Report by the Federal Trade Commission October 2003, Conclusion 
(Chapter 3, V.G, pages 164-165). See . Emphasis added.

34 See paragraph 15, “Should Patents be Granted for Computer Software or Ways 
of Doing Business? The Government's Conclusions”, . Emphasis added

35 Per Bill Thompson, journalist and technology commentator and frequent 
contributor to the BBC technology news

36 Ibid footnote 23

37 For a good article on the latest position see, . What is worse in the 
Blackberry story is that the USPTO may potentially end up ruling that NTP's 
patents are invalid (not because they are software patents but because of prior 
art) yet because of the court process RIM may end up having to settle anyway to 
avoid an injunction notwithstanding the patents may be revoked in due course. 
On 5 December 2005, a further NTP patent was revoked. For more details see,

38BECTA, (the British Educational Communications and Technology Agency), 
conducted a study which was published earlier in this year in which confirmed 
the important role that FOSS could play in schools in Britain. See . Also see, 
Tom Espiner’s article, "Italian schools move to Linux". ZDNet UK, September 05, 
2005,

39 Novell has just won a contract to supply the NHS with Novell's open source 
based SUSE Linux platform. The NHS expects to save approximately £75,000,000 
over three years. See

40 For examples of interesting alternative applications of “open source” 
business methodology see the “Danish” beer example, and the Open Source 
Biotechnology project,

41 Paragraph 35 CFPH.

42 Interim Report of a study group set up by the Japanese Ministry of Economy, 
Trade and Industry delivered in June 2005 as cited on “Japan Today “ – see

43 Per Jim Warren, board member of Autodesk at the USPTO 1994 hearings on 
software patents. Emphasis added.

44 Final Report, Public Consultation on the new Information Society Strategy 
beyond 2005, 26 November 2004 – 17 January 2005. Pg. 11 and 12 Emphasis added.

45 Per the RSA’s press release dated 14 October 2005, “International Commission 
calls for Governments to adopt new public interest benchmarks for intellectual 
property”.

46 Report entitled “Support To The Participation Of SMEs In The Sixth Framework 
Programme”, 18 Dec 2002, 
ftp://ftp.cordis.lu/pub/documents_r5/natdir0000036/s_1891005_20030127_130002_6L021891en.pdf
 . Emphasis added

47 Per Paul Hartnack, in his speech as chair of the “Software Patents in 
Europe” UKPO conference held on 23/03/1998. Mr Hartnack was the Comptroller 
General of the UKPO at the time.

48 Per Jim Warren, board member of Autodesk at the USPTO 1994 hearings on 
software patents

49 See

50 Ron McQuaker, past president of the British Computer Society in his speech 
at the conference cited at footnote 45 above.

----------------------------------------

The law is stated to the best of my knowledge as at 9 November 2005

Cristian Miceli is an IT lawyer in the UK and founder of Lawyers Against 
Software Patents (LASP) – www.lasporg.info. The article is written in a 
personal capacity. He can be contacted at: address@hidden

© Copyright Cristian Miceli 2006. This article is released under the Creative 
Commons license, attribution.