EN    EN  COMMISSION OF THE E UROPEAN COMMUNITIES 
Brussels, 09.03.2005 
COM(2005) 83 final 
2002/0047 (COD)   
COMMUNICATION FROM THE COMMISSION 
TO THE EUROPEAN PARLIAMENT 
 
pursuant to the second subparagraph of  Article 251 (2) of the EC Treaty 
 
concerning the 
common position of the Council on the adop tion of a directive of the European 
Parliament and Council on the patentabili ty of computer-implemented inventions 
 
EN 2   EN 2002/0047 (COD) 
COMMUNICATION FROM THE COMMISSION 
TO THE EUROPEAN PARLIAMENT 
 
pursuant to the second subparagraph of  Article 251 (2) of the EC Treaty 
 
concerning the 
common position of the Council on the adop tion of a directive of the European 
Parliament and Council on the patentabili ty of computer-implemented inventions 
1- BACKGROUND  
Date of transmission of the propos al to the EP and the Council 
(document COM(2002)[92] final – [2002/[0047]COD)1: 20 February2002 
Date of the opinion of the European Economic and Social 
Committee2: 19 September 2002 
Date of the opinion of the Eur opean Parliament, first reading3: 24 September 2002 
Date of adoption of the common position4: 7 March 2005 
2- OBJECTIVE  OF THE  COMMISSION  PROPOSAL 
The proposal for a Directive on the patentability of computer-implemented inventions aims at 
harmonising the provisions of national patent la w dealing with inventions which rely on 
computers for their performance. The Directive will bring under the supervision of the European Court of Justice the ru les applicable by national cour ts and patent offices charged 
with assessing the validity of patents and applica tions in this field. Given that many patents in 
this field are granted by the European Pate nt Office, the Administrative Council of the 
European Patent Organisation could be invited to consider adapting the Implementing Regulations of the European Patent Convention. 
3- COMMENTS
 ON  THE  COMMON  POSITION 
3.1 General remarks 
The Council, acting by qualified majority, has adopted a common position which incorporates 
the substance of some 25 of Pa rliament’s amendments at first reading. The Commission has 
indicated that it accepts  the common position, even though th is differs from the Commission’s 
                                                 
1 OJ No C 151, 25.6.2002, p.129 COM (2002) 92 final 
2 OJ No C 61 , 14.3.2003, p.154 
3 11503/03 CODEC 995 PI 70 
4 insert reference 
 
EN 3   EN original proposal in certain respects. In general, the Commission believes that the common 
position strikes an acceptable balance between th e interests of right holders and those of 
competitors and consumers (including in the ope n source community). This balance is further 
safeguarded by the new requirements in Article 7 for the Commission to monitor the impact 
of computer-implemented inventions in partic ular on small and medium-sized enterprises and 
on the open source community. 
As far as the Commission is concerned, the di rective continues to address the key objective 
stated in the explanatory memorandum of  the Commission’s proposal, namely the 
harmonisation of patent law between the Memb er States and the resolution of legal 
uncertainty in this field. It is crucial to not e that there is to date no Community legislative 
instrument which affects general patent law either in a horizontal manner or specifically relating to computer-implemented  inventions. The adoption of th is directive would therefore 
have the effect of bringing patent law in this field, for the very first time, explicitly within 
Community jurisdiction. 
A failure to adopt a directive would prevent Co mmunity institutions from exercising control 
in this strategic area of the European economy,  which would thus remain within the remit 
only of national patent offices and courts a nd the European Patent Office in Munich.  
3.1.1 Computer program product claims 
Although the Commission’s proposal did not exp licitly permit claims on computer programs 
on their own or on carriers, the Commission ha s accepted Article 5(2) of the common position 
as this has to be unders tood as relating to the enforceability  of (existing) patent rights and not 
to extending the scope of patentability . This is reinforced by the explicit link with Article 5 
(1) as mentioned below. To the extent that the relationship between Article 5(2) and the 
exclusion of computer programs as such (as is e xplicitly laid out in Article 4(1)) is open to 
differing interpretations, the text may need further clarification. 
Acts relating to computer pr ograms on their own or on ca rriers could be subject to 
proceedings for contributory infringement even without provisions equivalent to Article 5(2). 
The effect of Article 5(2) is thus to facilita te enforcement of legitim ate rights by ensuring that 
such acts may constitute direct, rather than  just contributory, infringements. This is 
particularly important in cases of infringeme nts across national boundaries as Member States’ 
courts do not have jurisdiction over contri butory infringements occurring outside their 
national territory. 
In any case, the final part of Article 5(2) ma kes clear that the claim on the computer program 
on its own or on a carrie r has to put in force a patentable  product or proces s claimed in the 
same patent application (and falling within the scope  of Article 5(1)). This ensures that Article 
5(2) cannot constitute protection equivalent to the patentability of computer programs as such, 
a reading which is furthermore confirmed by the more explicit language of the common 
position, in particular of Artic le 4 paragraphs 1 and 2.  
3.1.2. Interoperability 
The Commission is strongly committed to the pr omotion of interoperability as a means of 
fostering innovation and competition. This is consistent with the objectives of the 
Commission’s proposal to help safeguard investment in inve ntions which are new, inventive 
and industrially applicable. It is important to note that the requirement for sufficient 
 
EN 4   EN disclosure of a patented invention may facilitate access to information useful in achieving 
interoperability of computer-implemented inventions. 
The Commission affirmed its commitment to the policy objective of promoting 
interoperability and fosteri ng innovation by explicitly pres erving in Article 6 existing 
interoperability exceptions under copyright law 
The Commission believes that the Council common position remains consistent with these 
objectives. Equivalent conditions for patentability  have been maintained in new Articles 3 and 
4 (read in conjunction with Arti cle 2). As expressed in a stat ement by the Commission to be 
entered in the minutes of the Council adopting the common position (see below), the Commission considers that Article 6, read in conjunction with  Recital 22, permits any acts as 
described by Articles 5 and 6 of Directive 91 /250/EEC on the legal protection of computer 
programs by copyright, including any acts necessary  to ensure interoperability, without the 
need for authorisation from the patent’s right holder.  
The Commission furthermore welcomes the fact th at safeguards for inter operability have been 
strengthened in Article 8(d) and (g) in term s of the requirements on the Commission to report 
on how the situation regarding interoperability  has been affected by the passage of the 
directive. 
In the light of the Community objective of  promoting interoperability, the Commission 
intends to facilitate the approximation of the Council and Parliament positions drawing on 
amendments put forward by both in stitutions in first reading.  
Furthermore, Recital 21 recalls that a domina nt supplier who refuses to allow the use of a 
patented technique to achieve interoperability is  subject to the application of competition rules 
and in particular Articles 81 and 82 of the Treat y. The application of th ese Articles therefore 
contributes to achieving the objectives laid out  above, although it is of course important to 
note that competition law on its own cannot so lve all potential problems in this area. 
.3.2 Response to Parliament’s amendments at first reading  
Amendments accepted in full: 1, 2, 3, 34 (=115), 7, 8, 11, 12, 13, 15, 16, 71, 92, 23, 26, 27. Amendments accepted with minor modification: 85, 9, 86, 17, 19, 25. Amendments 88 and 89 have been accepted but in a revised form. Part of amendment 107 (=69) was accepted (the id ea that the technical contribution must be 
new) and some of the text of amendment 76 has b een used in recital 17 to deal with the issue 
that this amendment sought to address. 
3.3 Amendments introduced during the discussions within the Council 
Recital 1 
Council accepted Parliament’s amendment 1. Recital 5 Council accepted Parliament’s amendment 2. 
 
EN 5   EN Recital 8 
Council has incorporated Parliament’s amendm ent 3 and the second half of amendment 88 
into this new Recital. It was felt that amendm ent 3 was an equivalent but clearer restatement 
of the first part of amendment 88. 
Recitals 12 and 13 Council has moved the first part of recital 11 of the Commission’ s proposal to recital 12 of the 
Commission’s proposal. 
Recital 13 of the Commission’s proposal (deleted) Council accepted Parliament’s amendment 34 (=115). Recital 14 Council accepted Parliament’s amendment 85. Recital 15 Council accepted Parliament’s amendment 7. Recital 16 Council accepted Parliament’s amendment 8. Recital 17 Council accepted Parliament’s amendment 9. Recital 18 Council accepted Parliament’s amendment 86 w ith a slight modification to maintain 
conformity with the Articles and standard patent terminology (“obvious or non-technical” 
replaces “trivial”). 
Recital 20 Council accepted Parliament’s amendment 11. Recital 21 This recital has been modified by Council, taki ng inspiration from the text of Parliament’s 
amendment 76, to address the issue of interoperability. 
Recital 22 Council accepted Parliament’s amendment 13. 
 
EN 6   EN Article 2 
The Council deleted the Commission’s reference to ‘ prima facie  novel’ features in Article 
2(a). In Article 2(b), the C ouncil added an element of Ame ndment 107 (=69) which defines a 
technical contribution as being new and added a new sentence, tr ansferred from Article 4(3) 
of the Commission’s proposal, to define how  the technical cont ribution is assessed. 
Article 3 of the Commission’s proposal (deleted) Council accepted Parliament’s amendment 15. Article 3 Council restated and condensed Article 4 para graphs (1) and (2) of the Commission’s 
proposal into a single paragraph according to Parliament’s amendment 16 and transferred the 
substance of Article 4(3) of the Commission’ s proposal to Article 2(b) as noted above. 
Article 4 Council introduced a new Article 4. Article 4 (1) reiterates the principle that a computer 
program as such cannot constitute a patentab le invention. Article 4 (2) is Parliament’s 
amendment 17 with some additional wording to make clear that all forms of an excluded 
program (e.g. source or object code) are not patentable. 
Article 5 Council added Article 5(2) disallowing claims to  computer programs, alone or on carriers, 
unless the claimed program puts into force a product or process claimed in accordance with 
Article 5(1) in the same patent. 
Article 6 The Council modified Article 6 in line with Parliament’s amendment 19 while also specifying 
the relevant Articles of Dir ective 91/250/EEC which are app licable in this context. 
Article 7 Council accepted Parliament’s amendment 71. 
Article 8 
Council accepted Parliament’s amendments 92, 23, 25, 26 and the spirit of amendment 89. In 
Article 8(b), it also added a reference to the Community’s international obligations. This is understood as primarily a refere nce to the TRIPS Agreement. In  paragraph (f), introduced by 
amendment 25, the reference to the Community Patent was deleted as this is beyond the scope of the current Directive. New paragraph (g) is a restatement of the intentions behind 
amendment 89 which Council felt was clearer. 
Article 9 Council accepted Parliament’s amendment 27. 
 
EN 7   EN Article 10 
The Council stipulated a transposition period of  twenty four months (not defined in the 
Commission’s proposal). Parliame nt envisaged eighteen months. 
3.4 Commission position on the Council’s common position 
Overall the Commission supports  the Council’s common position because it retains the 
balance set out in the original  proposal while clarifying certai n aspects which were shown to 
be of concern to the Parliament. Most of the changes introduced by Council are based on 
Parliament’s amendments which the Commission had already indicated th at it could support. 
The remaining differences between the Council’s common position and the Commission’s original proposal are set out below. 
Recital 13  of the Commission’s proposal (deleted) 
The Commission can accept this deletion because th e substance is broadly restated in Recital 
16 as introduced by Parliament’s amendment 8. 
Recital 21 
The Commission supports the new wo rding as it reconfirms that an appropriate way to deal 
with potential competition issues between en terprises is through the established competition 
rules. The application of Articles 81 and 82 th erefore contributes to achieving objectives 
underlying the present directive.  This Recital usefully give s an example of a potential 
competition problem involving interoperabil ity, specifically where a dominant supplier 
refuses to allow the use of a patented technique which is n eeded for the sole purpose of 
ensuring conversion of the conventions used in two different computer systems or networks 
so as to allow communication and exch ange of data content between them. 
Article 2 
The insertion of the requirement that the technical contribution be new is acceptable. 
Article 4 
The new paragraph 1 of this Ar ticle states the existing law a nd, as the Commission set out to 
clarify and not change the current legal situation, this is an acceptable addition. 
The Commission can also accept the clarification in paragraph 2. 
Article 5 
The Commission can support the addition of paragraph 2 in the context of the overall package 
as it provides useful clarification as to the conditions under which particular forms of claim 
can and cannot be granted and is  balanced by other provisions. 
Article 6 
It is logical to refer to the relevant interope rability provisions precise ly so the Commission is 
in favour of this clarifying addition. 
 
EN 8   EN Article 10 
Although the Commission would have preferred the swifter transpos ition envisaged by 
Parliament, it can accept twenty four mont hs as the deadline for implementation. 
4- CONCLUSION 
The Commission considers that Council’s co mmon position maintains the balance aimed for 
in the original proposal and it can, therefore,  accept it. In particular, the current wording 
provides for sufficient incentives to innovation in this field and maintains the freedom to 
commercialise new products whil e allowing right holders to enforce their rights in an 
effective yet proportionate way ag ainst infringers. The fact of  harmonisation at a Community 
level ensures that the enforcement of these rights  is consistent across the European Union and 
therefore facilitates the efficien t functioning of the Single Market. 
The Commission invites the Parliament to engage constructively in further inter-institutional 
dialogue so as to ensure adoption of a directiv e which meets these objectives and is ready to 
engage further with both Parliament and Coun cil on key issues concer ning the directive, 
notably in the light of the Commission's commit ments to the promotion of interoperability 
5- COMMISSION STATEMENT 
The following statement is entered in the minutes of the Council adopting the common 
position 
“The Commission considers that  Article 6, read in  conjunction with Re cital 22, permits any 
acts as described by Articles 5 and 6 of Directive 91/250 /EEC on the legal protection of 
computer programs by copyright, including any acts necessary to ensure interoperability, 
without the need for authorisation from the patent’s right holder.”