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[translatable text] [howto translate]

 

Schiuma 2000: TRIPS and Exclusion of Software "as Such" from Patentability

argues that TRIPS must be interpreted in light of its purpose of establishing a uniform world trade environment and therefore software must be patentable everywhere. involuntarily provides interesting evidence on how European patent law was bent.

 

This article by Daniele Schiuma in the legal journal IIC Vol 31, which vehemently argues that the "computer program" exception in EPC §52 is non-conformant to TRIPS Art 27 and must be deleted.

Schiuma, a young patent attorney and research fellow at the Max Planck Institute for International Patent Copyright and Competition Law and discussion leader of the MPI's software patent workgroup, champions the well-known TRIPS fallacy and, in the process, tells us a lot of interesting details about how the patent lobby managed to pretend that granting of software patents was legal.

Schiuma's argumentation is built on a mixture of quotations from legal documents and personal political views, such as the presumption that regional legal definitions of "field of technology", "invention", "industrial application" etc should be avoided and a uniform global legal definition must be attempted. According to Schiuma's view, the object of the TRIPS treaty is "reducing distortions and impediments to international trade" and the non-uniformity of patent law regarding software is such a distortion.

This is one of many unreflected presumptions that make much of Schiuma's argumentation circular: Schiuma attempts to prove that the European software exclusion is not within the scope of variability allowed by TRIPS. So he first asserts that TRIPS must be construed so as to allow no variability.

It can however easily be argued that TRIPS is intended to "harmonise", as it was always called, not to "uniformise" the systems of various countries. It imposes more abstract rules such as that no country shall arbitrarily exclude any field of technolgy it happens to want to protect. These rules are intended to allow the coexistence of diverse systems while minimalising frictions that could arise from regional protectionism.

Here is another example of the circularity of Schiuma's reasoning:

Even in light of the exceptions in Art.27(3) of TRIPS, it does not appear permissible to construe the term "inventions" in Art. 27(1) differently on a country-by-country basis by using the different legal definitions in the individual member states. Article 27(3) specifies definitely those areas of invention that a member can exclude from patentability. The attempt to expand artificially the areas of exclusion permitted by Art. 27(3) by using a "national" legal definition of the concept of the "invention" to exclude from patentability subject matter that is actually to be patented pursuant to Art. 27(1), would thus represent an attempt to evade Art. 27(3) and would lead to a conflict between the provisions of Art. 27(1) and (3).

Here Schiuma presupposes what he wants to prove: that software is "actually to be patented pursuant to Art. 27 (1)" and that European national legislation is "artificially expanding the area of exclusion" by using a special "legal definition of the term invention". The opposite is true: the scope of what is "to be patented pursuant to Art 27 (1)" cannot be determined without recourse to a "definition of the term invention".

Schiuma proceeds to argue that patenting software is more in accordance with TRIPS than not patenting and therefore the whole world must uniformly patent software. This argumentation, as most legal argumenation contains a lot of personal politico-philosophical assumptions mixed with a complicated set of laws and caselaw. Here is an example of Schiuma's philosophy on software:

... no [ TRIPS negtioation group ] member equated or intended to equate software with mathematical methods or the like. This would also be in conflict with the nature of software, according to which specific (program) commands cause a physical change in specific elements of the computer. Accordingly, computer programs, i.e. software, are always of technical nature. In contrast, mathematical methods and scientific theories (as such) represent pure knowledge that causes no physical changes in its abstract form. Only the application of a mathematical method, for instance, in a particular field of technology (e.g. by means of a computer) causes a physical change and would thus be technical.

This is completely inevident. Software programs by themselves (i.e. when not running) also don't cause a physical change in any element of the computer. And even when running, this change does not go beyond the normal predisposition of the computer. Moreover, all computer programs can be represented as mathematical methods and vice versa.

A program running on a computer has one thing in common with a machine: it behaves. But it has other things in common with a mathematical formula and with other items that can't be patented: it is pure information which can be copied. Why should it be up to lawyers to decide which of these qualities is more essential. How can one decide in just a few sentences like Schiuma is trying above?

There seems also to be a big non sequitur in the following paragraph:

Just as pharmaceutical and agrochemical products can be included within Art 27 of TRIPS without any difficulty, and thus can be ascribed to a "field of technology", software inventions can also be qualified as belonging to a "field of technology". Correspondingly, software cannot be excluded a priori from the "field of technology" and thus from Art 27 (1).

If software can be qualified as a f.o.t., that doesn't imply that it "cannot be excluded ...". Does Mr. Schiuma really ignore the difference between "can" and "must"?

Again there are big differences between "software" and other "fields of technology" such as pharmaceutics. Just to name a few:

  • Software is a basic cultural technique that pervades all fields of technology and even science, education, commerce etc. Although astronomy belongs to a completely distinct "field of technology", astronomical observatories need to write and share their own software in order to get their astronomical calculations done. But they do not need to develop their own drugs.
  • Software can be copied without costs, and it cannot even be sold. What can be sold are only exclusion rights. Without exclusion rights, the price of software will tend toward zero. Moreover, imposing exclusion rights means reducing important technical qualities of software, which is why in many cases free software is the best software.

The question of economic effect and desirability of software patenting does not appear in Schiuma's writing, but there is the assertion that software has become a "huge industry with an annual economic growth of 13%" which "deserves equal protection" with other "fields of technology". Evidently, Schiuma knows somehow that the patent system is not an end in itself but a means for promoting economic progress. But his reasoning does not go beyond the level of postulating "equality". Moreover, there is no mention about any real-world cases where people have complained about inequal treatment. Schiuma's inequality is not a problem of injustice in real life but rather a problem of asymetry in Schiuma's explanation model.

In a comment on my article, Bernhard Lang pointed out:

The trick of lawyers is to place the issues in their own fictitious world. If that were justified, the law would never evolve, or would do so according to the oniric evolution of lawyers dreams. But the law is here to express real world and social consensus. In the case of patents, it must be explained in terms of human rights, economic growth, social benefits, innovation incentives (in random order). The job of Lawyers is syntax: to put the conclusion in usable wording, not to change or extend the semantics based on purely textual argumentation. The first fallacy of Schiumain's rants is that he has no legitimity to begin with, as is the case for all layers when it comes to decide whether an existing law applies to a different subject matter. This fallacy is the origin of many problems with the current changes in economics. Lawyers are incompetent in both senses of the word:
  • they do not have the knowledge (technical, economic, social)
  • they do not have the legitimacy
But, like most, they want the power. We should be careful not to give them legitimacy by arguing with them. On the other hand we can use their arguments against them (as you most remarkably did).

During the process argumentation he finds some contradictions between TRIPS and software patenting and even contradictions between the EPC and the EPO's legal practice. He resolves all these by reference to his initially stated basic presumptions that the world's IP system must be uniformised. Again we have a mixture of caselaw with implicit more or less naive presumptions.

Schiuma's article can be quoted to support some of our criticism of the EPO.

Hypothesis:
The German legislature, when ratifying TRIPS, assumed that software in European law is "not field of technology" and that this European view is conformant with TRIPS. Thus, our patent lawyers are clearly trying to impose their view on that of their sovereign:
Schiuma's Evidence:
In its ratification of GATT/TRIPS, the German legislature saw no conflict between Sec. 1(2)(3) and 1(3) of the Patent Act and Art. 27(1) of TRIPS...

...

Leaving aside this inaccuracy, the general criticism can, however, be raised that the German delegation's reply takes as its starting point the German/European interpretation of the concept of "in all fields of technology" in Art. 27(1) of TRIPS, which, as shown above, is inadmissible.

Within the meaning of Art. 27(1), software must be regarded both as an "invention" and as part of a "field of technology", with the result that the exclusion of software "as such" from patentability purssuant to Art. 52(2) and (3) of the EPC .. does not conform with TRIPS.

Hypothesis:
The EPO's interpretation of "computer programs as such" as "computer programs as far as they are non-technical" is wrong.
Schiuma's Evidence:
Even if a distinction is made between technical and non-technical software programs, the provisions of Art. 52(2)(c) and (3) of the EPC ... are incompatible with Art 27(1) of TRIPS, since the former exclude "programs for computers as such" entirely, i.e. irrespective of such a distinction between technical and non-technical programs.

Hypothesis:
The deletion of the computer programs exceptions in 52(2) will result in more software patenting even under the current regime of bent law
Schiuma's Evidence:
The non-conformity of the provisions of the .. EPC with TRIPS in regard to software remains evident, for instance, from the decision "Computer-Related Invention/VICOM", in which one and the same technical constellation of facts was interpreted differently on the basis of different wording in the patent claims: on the one hand, a "process for the digital filtering of data" was regarded as a mathematical method or as a computer program "as such" and thus was not patentable, while at the same time a "procedure for the digital processing of images in the form of a data array" was regarded as patentable.

It appears doubtful whether such a value judgement would have been made in the same way if the prohibition on patents for computer programs "as such" contained in Art. 52(2)(c) and (3) of the EPC had not existed, since an improved "procedure for the digital filtering of data" (without restriction to the processing of images) can indeed be a technical contribution .. and thus be accessible to patent protection as a matter of principle.

Hypothesis:
TRIPS does not take priority over European patent law
Schiuma's Evidence:
The decision to classify GATT/TRIPS as community law or as international law continues to play a decisive role for its status in its relationship to German (domestic) law: if it is regarded as community law, it then takes priority, while it enjoys equal status if it need "only" be regarded as international law.

There continues to be disagreement concerning the direct applicability of the TRIPS provisions in the individual member states. On this point, the German legislature has assumed that TRIPS is directly applicable as a matter of principle[1].

In the present case .. direct applicability can, however, be excluded since Art. 27(1) of TRIPS is insufiiciently clear and unconditional on the question of the patentability of software.

Hypothesis:
TRIPS does not mandate a change of the EPC
Schiuma's Evidence:
The European Patent Organisationis not a member of the WTO Agreement and thus not subject to any direct obligations deriving from GATT/TRIPS. It is true that all EPC member states, with the exception of Monaco, are members of the WTO, but TRIPS merely imposes the obligation to adapt national regulations and not any international agreements.

Hypothesis:
A lobby withing the EPO is putting European legislatures under pressure to "conform to TRIPS". This lobby includes the patent offices of certain countries as well as the patent lawyers and their clients.
Schiuma's Evidence:
At present, there is no specific discussion of any change to the German Patent Act with respect to Art. 27(1) of TRIPS. On the other hand, the Standing Advisory Committee before the European Patent Office (At the insistence of Austria, Spain, Sweden, Switzerland and the "users of the system") has pointed out (at the 28th meeting in Munich on June 25-26 1998, cf the comment "Points for a revision of the EPC", CACEPO 2/98) that the provisions of Art. 52(2) of the EPC with respect to computer programs do not conform with Art. 27(1) of TRIPS, and should therevore be deleted.

Hypothesis:
The EU harmonisation directive will bring the nation states under the jurisdiction of TRIPS and WTO related international bodies. The patent inflation lobby is pushing for a EU directive in order to deprive the nation states of their sovereignty in this area.
Schiuma's Evidence:
According to Art. 64 of TRIPS, the Understanding on the Settlement for Disputes (Vereinbarung ueber Regeln und Verfahren zur Beilegung von Streitigkeiten) is applicable to TRIPS, with the result that a GATT Member can initiate dispute settlement proceedings before the WTO in order to reconcile the provisions of the German Patent Act concerning the patentability of software "as such" with Art. 27(1) of TRIPS. However, at present it is not possible for a natural or legal person to initiate such proceedings before the WTO. They can only institute domestic legal proceedings and persuade their government to initiate dispute settlement proceedings.

It would also be conceivable for an EU Member to invoke the European Court of Justice pursuant to Art 107 of the EC Treaty for an infringement of the obligation to implement EC law or secondary law by another Member. Proceedings on the infringement of the treaty can also be initiated by the European Commission according to Art 169 of the EC Treaty. However, both possibilities presuppose the competence of the European Community, which, according to Opinion 1/94 of the European Court of Justice[2], is divided with respect to GATT/TRIPS between the European Community and its member states, with the European Community enjoying jurisdiction in those areas in which it has applied harmonisation measures. In case of patent law, competence is held by the member states, since here, with the exception of a number of narrowly defined areas, no harmonisation has (as yet) taken place. If the European Communities should subsequently apply harmonisation measures (fn: The European Commission plans a Directive for harmonising the patentability of computer software inventions), the corresponding sector would fall within its competence.

The decision to classify GATT/TRIPS as community law or as international law continues to play a decisive role for its status in its relationship to German law: if it is regarded as community law, it then takes priority, while it enjoys equal stats if it need "only" be regarded as international law.

Hypothesis:
The EPO is planning to remove all legislative power as to the scope of patentability from the nation states and take it into its own hand. Moreover, the EPO has already invented the new rules by two decisions in 1997 and now wants these decisions to be codified as binding rules.
Schiuma's Evidence:
Alternatively the Preseident of the EPO has proposed to revise Art. 52(1)-(3) to read like Art. 27(1) of TRIPS, so that the exclusion list, according to Art. 52(2) and (3) of the EPC, would be completely deleted. On the other hand, the EPO will revise the examination guidelines for software-related inventions by including the interpretation of Art. 52(2) and 52(3) of the EPC according to decsisions T 935/97 and T 1173/97.

Schiuma concludes his article by stating the conclusion that he tried to argue for all the way along:

There is a binding obligation in Art. 27(1) of TRIPS to provide patent protection for "inventions .. in all fields of technology", whereby these terms must be construed autonomously on the basis of TRIPS, i.e. independently of national interpretation approaches.

As we have read above, TRIPS 27 contains no "obligation to construe these terms autonomously on the basis of TRIPS". And the German legislature doesn't see such an obligation in there either.

Apparently Schiuma and his mentors from the MPI, the AIPPI, the UNION and other organisations of the international patent lobby already take it for granted that they are the actual legislators who should, based on pure textual intepretation of caselaw, without any need of justification, impose uniform laws on all sovereign nations.


Notes

[1] Memorandum, BT-Drucks, 12/7655 (new), at 335, 337
[2] ECJ, Opinion 1/94, November 15, 1994, 27 IIC 503 (1996) - TRIPS Jurisdiction


http://swpat.ffii.org/vreji/papri/iic-schiuma00en.html
2000-07 SWPAT-AG des FFII
  
 
[ Hardcopy Collection | Automatische Absatzsteuerung (1999) | BGH-Urteil Seitenpuffer 1992 | BGH bestätigt ein vom BPatG als untechnisch betrachtetes Patent auf ABS-Steuerung | BGH-Urteil Chinesische Schriftzeichen 1992 | Esslinger & Betten 2000: Patentschutz im Internet | Betten 1995: Patentschutz von Computerprogrammen | Raubenheimer 1994: Die jüngere BGH-Rechtsprechung zum Softwareschutz nach Patentrecht | Mellulis 1998: Zur Patentierbarkeit von Programmen fuer DV-Anlagen | Tauchert 1999: Zur Patentierbarkeit von Programmen für DV-Anlagen | Schmidtchen 1999: Zur Patentfähigkeit und Patentwürdigkeit von Computerprogrammen und von programmbezogenen Lehren | Tauchert 1999: Zur Patentierbarkeit von Programmen fuer DV-Anlagen | EPO decision T 6/83 for IBM interprogram communication system | EPO decision T 208/84 for Vicom | EPO decision T 22/85 against IBM archival system | EPO decision T 115/85 for IBM visualisation system | EPO decision T 163/85 for BBC color tv signal system | EPO T 26/86 for Koch and Sterzel X-ray apparatus | EPO decision T 110/90 for IBM printer control markup | EP decision T 164/92 on Bosch | EPO decision T 769/92 for Sohei file shuffling system | EPO decision T 410/96 on IBM document markup | EPO decision T 935/97 for IBM program product | EPA-Entscheidung T 1173/97: IBM Programmprodukt | Metzger & Jäger 1999: Open Source Software und deutsches Urheberrecht | Lester C. Thurow 1997: Needed: A New System of Intellectual Property Rights | Bernhard Müller kündigt EG-Richtlinie an | Schiuma 2000: TRIPS and Exclusion of Software "as Such" from Patentability | News on Computer Law in Europe and Germany | Patent Protection for Modern Technologies | Le recours au droit de la propriété industrielle | Anne Fitzgerald 1994: Patentability of Software in Australia - CCom v Jiejing | Natalie Stoianoff 1999: Patenting Computer Software - An Australian Perspective | Christopher Wood 1998: Patents in Software - Commercially Useful is Not Enough | The Patentability of Software-related Inventions in the United States | Peter Rott: Zur Anpassung des Indonesischen Patentrechts an das TRIPS-Abkommen | US-Urteil Court of Appeal for the Federal Circuit 1998-07-23: Algorithmen und Geschäftsmethoden patentierbar | Gespräch Blasum-Heitto über EU-Fragebögen | Patenting Computer Software in Europe - the Future commission's initiative | Technical board of Appeal on biotech case | Folgedokument zum Grünbuch | Pamela Samuelson 1989: Survey among IP experts and software engineers on Look and Feel Copyright | Pamela Samuelson 1989: Survey on the Patent/Copyright Interface for Computer Programs | Pamela Samuelson 1990: Should Program Algorithms be Patentable? | Official Journal | Columbia Law Review | Proceedings of the Union Round Table Conference 1997 | EPO in 1999-03 convened session about EPC change ]