Inevitably the consultation process led to a compromise in that the draft directive fell some way short of the level of protection available for software under well established EPO case law. For example, the principles of the IBM decisions [1999] RPC 861 have not found their way into the draft directive. These include patent protection for software per se and software recorded on a carrier, provided in both cases it is capable of having a technical effect when run on a computer. Article 5 of the draft directive, which sets out allowable forms of claim, currently only explicitly recognises types of [programmed] computer apparatus and methods of operating such apparatus. The nature of the software industry is such that without protection for software per se, or at least software on a carrier, software providers in Europe would have more limited patent protection available to them than do providers in other fields of technology. This seems contrary to TRIPs and also leaves software businesses in Europe at a competitive disadvantage compared to U.S. and Japanese counterparts.
Experienced commentators have, therefore, been pressing for an amendment to Article 5 and an extension of its scope to parallel the position under EPO case law. In spite of broad agreement on the directive’s underlying principles, on 14 November 2002, the EU’s Competitiveness Council failed to agree unanimously that the initial proposal under the draft Directive should be amended in line with EPO case law. At present, Spain is maintaining a parliamentary reservation, while France is maintaining a general reservation pending the European Parliament’s opinion on first reading.
It is worth considering how the effectiveness of patent protection for software would be reduced if the initial draft is not amended to reflect the current status quo under EPO case law. The true level of protection afforded by a software patent depends on a combination of the infringement provisions and remedies provided by the jurisdiction in question, as well as the claim format and language used to define the patent monopoly. A change away from protection for qualifying software, independently or on a carrier, could undermine the value of software patents and could mean that some previously granted European software patents will be found to be at least partially invalid. For patent protection of software to be in line with protection available for other fields of technology, a patent should provide an exclusive right to, e.g., manufacture, use, sell, offer for sale and export the alleged infringing product. Software products tend to be loaded or pre-programmed on hardware, packaged on carrier mediums or, increasingly, distributed electronically. Clearly, in the latter two cases, only claims to software per se, or software recorded on a carrier are well placed to cover certain supply, handling and exporting activities—activities which would not be covered directly by claims to a programmed apparatus or method of operating the same.
The draft directive now proceeds to European Parliament for first reading following scrutiny by a parliamentary committee on 18 March 2003. The EU Council’s common position is expected to follow later in the year.
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