Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions
Date: 2002-02-20
Institutions: European Commission
Subjects: computer assisted design, information technology, intellectual property, patent, software

25.6.2002

EN

Official Journal of the European Communities

C 151 E/129

Proposal for a Directive of the European Parliament and of the Council on the patentability of
computer-implemented inventions

(2002/C 151 E/05)

COM(2002) 92 final — 2002/0047(COD)

(Submitted by the Commission on 20 February 2002)

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE
EUROPEAN UNION,

necessary to ensure that an optimum environment exists
for developers and users of computer programs in the
Community.

Having regard to the Treaty establishing the European
Community, and in particular Article 95 thereof,

Having regard to the proposal from the Commission,

Having regard to the opinion of the Economic and Social
Committee,

Acting in accordance with the procedure laid down in Article
251 of the Treaty,

Whereas:

(1) The realisation of the internal market implies the elimi-
nation of restrictions to free circulation and of distortions
in competition, while creating an environment which is
favourable to innovation and investment. In this context
the protection of inventions by means of patents is an
essential element for the success of the internal market.
Effective and harmonised protection of computer-imple-
is
mented inventions
essential in order to maintain and encourage investment
in this field.

the Member States

throughout

(2) Differences exist

offered

inventions

in the protection of computer-imple-
administrative
mented
practices and the case law of
the different Member
States. Such differences could create barriers to trade
the
the proper
and hence
internal market.

functioning of

impede

the

by

(3) Such differences have developed and could become
greater as Member States adopt new and different admin-
istrative practices, or where national case law interpreting
the current legislation evolves differently.

(4) The steady increase in the distribution and use of
computer programs in all
fields of technology and in
their world-wide distribution via the Internet is a critical
therefore
factor

in technological

innovation.

is

It

(5) Therefore, the legal rules as interpreted by Member States'
courts should be harmonised and the law governing the
patentability of computer-implemented inventions should
be made transparent. The resulting legal certainty should
enable enterprises to derive the maximum advantage from
patents for computer-implemented inventions and provide
an incentive for investment and innovation.

aspects of

on trade-related

(6) The Community and its Member States are bound by the
Agreement
intellectual
property rights (TRIPS), approved by Council Decision
94/800/EC of 22 December 1994 concerning the
conclusion on behalf of the European Community, as
regards matters within its competence, of the agreements
reached in the Uruguay Round multilateral negotiations
(1986-1994) (1). Article 27(1) of TRIPS provides that
patents shall be available for any inventions, whether
products or processes,
technology,
in all
involve an inventive step
provided that they are new,
and are capable of
industrial application. Moreover,
according to TRIPS, patent rights should be available
and patent rights enjoyable without discrimination as to
the
should
accordingly apply to computer-implemented inventions.

technology. These

principles

fields of

field

of

aesthetic

scientific

discoveries,

(7) Under the Convention on the Grant of European Patents
signed in Munich on 5 October 1973 and the patent laws
of the Member States, programs for computers together
theories, mathematical
with
methods,
and
creations,
methods for performing mental acts, playing games or
doing business, and presentations of
information are
expressly not regarded as inventions and are therefore
excluded from patentability. This exception, however,
applies and is justified only to the extent that a patent
application or patent relates to such subject-matter or
activities as such, because the said subject-matter and
activities as such do not belong to a field of technology.

schemes,

rules

(8) Patent protection allows innovators to benefit from their
creativity. Whereas patent rights protect innovation in the
interests of society as a whole; they should not be used in
a manner which is anti-competitive.

(1) OJ L 336, 23.12.1994, p. 1

C 151 E/130

EN

Official Journal of the European Communities

25.6.2002

legal protection of

(9) In accordance with Council Directive 91/250/EEC of 14
May 1991 on the
computer
programs (1), the expression in any form of an original
computer program is protected by copyright as a literary
work. However, ideas and principles which underlie any
element of a computer program are not protected by
copyright.

(10) In order for any invention to be considered as patentable
it should have a technical character, and thus belong to a
field of technology.

(11) Although

are
computer-implemented
considered to belong to a field of technology,
in order
to involve an inventive step, in common with inventions
in general, they should make a technical contribution to
the state of the art.

inventions

particular provisions thereof relating to decompilation
and interoperability, or the provisions concerning semi-
conductor topographies or trade marks, shall not be
affected through the protection granted by patents for
inventions within the scope of this Directive.

sufficiently

cannot be

(19) Since the objectives of the proposed action, namely to
rules on computer-implemented
harmonise national
inventions,
the
Member States and can therefore, by reason of the scale
or effects of the action, be better achieved at Community
level, the Community may adopt measures, in accordance
with the principle of subsidiarity as set out in Article 5 of
the Treaty. In accordance with the principle of propor-
tionality, as set out in that Article, this Directive does not
go beyond what is necessary to achieve those objectives.

achieved by

(12) Accordingly, where an invention does not make a
technical contribution to the state of the art, as would
be the case, for example, where its specific contribution
lacks a technical character,
lack an
inventive step and thus will not be patentable.

the invention will

(13) A defined procedure or

sequence of actions when
performed in the context of an apparatus such as a
computer may make a technical contribution to the
the art and thereby constitute a patentable
state of
invention. However, an algorithm which is defined
without reference to a physical environment is inherently
non-technical and cannot therefore constitute a patentable
invention.

(14) The legal protection of computer-implemented inventions
should not necessitate the creation of a separate body of
law in place of the rules of national patent law. The rules
of national patent law should remain the essential basis
computer-implemented
for
inventions as adapted or added to in certain specific
respects as set out in this Directive.

legal protection of

the

(15) This Directive should be limited to laying down certain
principles as they apply to the patentability of such
inventions, such principles being intended in particular
to ensure that inventions which belong to a field of tech-
nology and make a technical contribution are susceptible
those
of protection, and conversely to ensure that
inventions which do not make a technical contribution
are not so susceptible.

(16) The competitive position of European industry in relation
to its major trading partners would be improved if the
current differences in the legal protection of computer-
implemented inventions were eliminated and the legal
situation was transparent.

(17) This Directive
application of
Articles 81 and 82 of the Treaty.

shall be without prejudice
competition rules,
the

to the
in particular

(18) Acts permitted under Directive 91/250/EEC on the legal
in

computer programs by copyright,

protection of

HAVE ADOPTED THIS DIRECTIVE:

Article 1

Scope

This Directive
lays down rules
computer-implemented inventions.

for

the patentability of

Article 2

Definitions

For the purposes of this Directive the following definitions
shall apply:

(a)

‘computer-implemented invention’ means any invention the
performance of which involves the use of a computer,
computer network or other programmable apparatus and
having one or more prima facie novel features which are
realised wholly or partly by means of a computer program
or computer programs;

(b) ‘technical contribution’ means a contribution to the state of
the art in a technical field which is not obvious to a person
skilled in the art.

Article 3

Computer-implemented inventions as a field of

tech-

nology

Member States shall ensure that a computer-implemented
invention is considered to belong to a field of technology.

Article 4

Conditions for patentability

1. Member States shall ensure that a computer-implemented
invention is patentable on the condition that it is susceptible of
industrial application, is new, and involves an inventive step.

(1) OJ L 122, 17.5.1991, p. 42 — Directive amended by Directive

93/98/EEC (OJ L 290, 24.11.1993, p. 9).

2. Member States shall ensure that
is a condition of
involving an inventive step that a computer-implemented
invention must make a technical contribution.

it

25.6.2002

EN

Official Journal of the European Communities

C 151 E/131

technical

contribution

assessed
the difference between the scope of

by
The
3.
consideration of
the
patent claim considered as a whole, elements of which may
comprise both technical and non-technical features, and the
state of the art.

shall

be

Article 5

Form of claims

Member States shall ensure that a computer-implemented
invention may be claimed as a product,
is as a
programmed computer, a programmed computer network or
other programmed apparatus, or as a process carried out by
such a computer, computer network or apparatus through the
execution of software.

that

Article 6

Relationship with Directive 91/250/EEC

Acts permitted under Directive 91/250/EEC on the legal
protection of computer programs by copyright,
in particular
provisions thereof relating to decompilation and interoper-
semiconductor
ability,
topographies or trade marks, shall not be affected through
the protection granted by patents for inventions within the
scope of this Directive.

concerning

provisions

the

or

Article 7

Monitoring

The Commission shall monitor the impact of computer-imple-
mented inventions on innovation and competition, both within
Europe and internationally, and on European businesses,
including electronic commerce.

Article 8

Report on the effects of the Directive

The Commission shall report to the European Parliament and
the Council by [Date (three years from the date specified in
Article 9(1))] at the latest on

(a) the

impact

patents
inventions on the factors referred to in Article 7;

computer-implemented

for

of

(b) whether

the rules governing the determination of

the
patentability requirements, and more specifically novelty,
inventive step and the proper
scope of claims, are
adequate; and

(c) whether difficulties have been experienced in respect of
Member States where the requirements of novelty and
inventive step are not examined prior to issuance of a
patent, and if so, whether any steps are desirable to
address such difficulties.

Article 9

Implementation

1. Member States shall bring into force the laws, regulations
and administrative provisions necessary to comply with this
Directive not later than [Date (last day of a month)]. They
shall forthwith inform the Commission thereof.

When Member States adopt those provisions, they shall contain
a reference to this Directive or shall be accompanied by such a
reference on the occasion of their official publication. Member
States shall determine how such reference is to be made.

2. Member States shall communicate to the Commission the
text of the provisions of national law which they adopt in the
field covered by this Directive.

Article 10

Entry into force

This Directive shall enter into force on the twentieth day
following that of its publication in the Official Journal of the
European Communities.

Article 11

Addressees

This Directive is addressed to the Member States.