Common Position (EC) No 20/2005 of 7 March 2005 adopted by the Council, acting in accordance with the procedure referred to in Article 251 of the Treaty establishing the European Community, with a view to adopting a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions
Date: 2005-03-07
Institutions: Council of the European Union
Subjects: computer assisted design, information technology, intellectual property, patent, software

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Official Journal of the European Union

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COMMON POSITION (EC) No 20/2005

adopted by the Council on 7 March 2005

with a view to adopting Directive 2005/…/EC of the European Parliament and of the Council of …
on the patentability of computer-implemented inventions

(2005/C 144 E/02)

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE
EUROPEAN UNION,

Having regard to the Treaty establishing the European Com-
munity, and in particular Article 95 thereof,

Having regard to the proposal from the Commission,

Having regard to the opinion of the European Economic and
Social Committee (1),

Acting in accordance with the procedure laid down in Article
251 of the Treaty (2),

Whereas:

(1)

(2)

(3)

(4)

The realisation of the internal market implies the elimi-
nation of restrictions to free circulation and of distor-
tions 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, transparent and harmonised
inventions
protection
throughout the Member States is essential in order to
maintain and encourage investment in this field.

computer-implemented

of

Differences exist in the protection of computer-imple-
mented inventions offered by the administrative prac-
tices and the case law of the different Member States.
Such differences could create barriers to trade and hence
impede the proper functioning of the internal market.

Such differences could become greater as Member States
adopt new and different administrative practices, or
where national case law interpreting the current legisla-
tion evolves differently.

The steady increase in the distribution and use of
computer programs in all fields of technology and in
their worldwide distribution via the Internet is a critical

(1) OJ C 61, 14.3.2003, p. 154.
(2) Opinion of the European Parliament of 24 September 2003 (OJ
C 77 E, 26.3.2004, p. 230), Council Common Position of 7 March
2005 and Position of
the European parliament of … (not yet
published in the Official Journal).

(5)

(6)

(7)

factor in technological innovation. It is therefore neces-
sary to ensure that an optimum environment exists for
developers and users of computer programs in the Com-
munity.

Therefore, the legal rules governing the patentability of
computer-implemented inventions
should be harmo-
nised so as to ensure that the resulting legal certainty
and the level of requirements demanded for patentability
enable innovative enterprises to derive the maximum
advantage from their inventive process and provide an
incentive for investment and innovation. Legal certainty
will also be secured by the fact that, in case of doubt as
to the interpretation of this Directive, national courts
may, and national courts of last instance must, seek a
ruling from the Court of Justice.

The Community and its Member States are bound by the
Agreement on trade-related aspects of intellectual prop-
erty 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 to 1994) (3). 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 that Article, patent rights should be avail-
able and patent rights enjoyable without discrimination
as to the field of technology. These principles should
accordingly apply to computer-implemented inventions.

fields of

Under the Convention on the Grant of European Patents
signed in Munich on 5 October 1973 (European Patent
Convention) and the patent laws of the Member States,
programs for computers together with discoveries, scien-
tific theories, mathematical methods, aesthetic creations,
schemes, rules and 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 the above subject-
matter or activities as such, because the said subject-
matter and activities as such do not belong to a field of
technology.

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

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(8)

(9)

(10)

(11)

(12)

The aim of this Directive is to prevent different interpre-
tations of the provisions of the European Patent Conven-
tion concerning the limits to patentability. The conse-
quent legal certainty should help to foster a climate
conducive to investment and innovation in the field of
software.

Patent protection allows innovators to benefit from their
creativity. Patent rights protect innovation in the inter-
ests of society as a whole and should not be used in a
manner which is anti-competitive.

legal protection of

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.

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

It is a condition for inventions in general that, in order
to involve an inventive step, they should make a tech-
nical contribution to the state of the art.

(13) Accordingly, although a computer-implemented inven-
tion belongs to a field of technology, where it does not
make a technical contribution to the state of the art, as
would be the case, for example, where its specific contri-
bution lacks a technical character, it will lack an inven-
tive step and thus will not be patentable.

(14)

(15)

(16)

The mere implementation of an otherwise unpatentable
method on an apparatus such as a computer is not in
itself sufficient
to warrant a finding that a technical
contribution is present. Accordingly, a computer-imple-
mented business method, data processing method or
other method,
in which the only contribution to the
state of the art is non-technical, cannot constitute a
patentable invention.

If the contribution to the state of the art relates solely to
unpatentable matter, there can be no patentable inven-
tion irrespective of how the matter is presented in the
technical
claims. For example,
contribution cannot be circumvented merely by speci-
fying technical means in the patent claims.

the requirement

for

Furthermore, an algorithm is inherently non-technical
and therefore cannot constitute a technical
invention.
Nonetheless, a method involving the use of an algorithm
might be patentable provided that the method is used to
solve a technical problem. However, any patent granted

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

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

(17)

(18)

(19)

(20)

(21)

for such a method should not monopolise the algorithm
itself or its use in contexts not foreseen in the patent.

The scope of
the exclusive rights conferred by any
patent is defined by the claims, as interpreted with refer-
ence to the description and any drawings. Computer-
implemented inventions should be claimed at least with
reference to either a product such as a programmed
apparatus, or to a process carried out in such an appa-
ratus. Accordingly, where individual elements of soft-
ware are used in contexts which do not involve the
realisation of any validly claimed product or process,
such use will not constitute patent infringement.

The legal protection of computer-implemented inven-
tions does 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 remain the essential basis for
the legal protection of computer-implemented inven-
tions. This Directive simply clarifies the present legal
position with a view to securing legal certainty, transpar-
ency, and clarity of
the law and avoiding any drift
towards the patentability of unpatentable methods such
as obvious or non-technical procedures and business
methods.

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
of protection, and conversely to ensure that those inven-
tions which do not make a technical contribution are
not susceptible of protection.

The competitive position of Community industry in rela-
tion to its major trading partners will be improved if the
current differences in the legal protection of computer-
implemented inventions are eliminated and the legal
situation is transparent. With the present trend for tradi-
tional manufacturing industry to shift their operations to
low-cost economies outside the Community, the impor-
tance of intellectual property protection and in particular
patent protection is self-evident.

This Directive should be without prejudice to the appli-
cation of Articles 81 and 82 of the Treaty, in particular
where a dominant supplier refuses to allow the use of a
patented technique which is needed for the sole purpose
of ensuring conversion of the conventions used in two
different computer systems or networks so as to allow
communication and exchange of data content between
them.

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(22)

(23)

The rights conferred by patents granted for inventions
within the scope of this Directive should not affect acts
permitted under Articles 5 and 6 of Directive
91/250/EEC, in particular under the provisions thereof
in respect of decompilation and interoperability. In par-
ticular, acts which, under Articles 5 and 6 of Directive
91/250/EEC, do not require authorisation of the right-
holder with respect to the rightholder's copyrights in or
pertaining to a computer program, and which, but for
those Articles, would require such authorisation, should
not require authorisation of the rightholder with respect
to the rightholder's patent rights in or pertaining to the
computer program.

Since the objective of this Directive, namely to harmo-
nise national rules on the patentability of computer-
implemented inventions, cannot be sufficiently achieved
by the Member States and can therefore be better
achieved at Community level,
the Community may
in accordance with the principle of
adopt measures,
subsidiarity as set out in Article 5 of the Treaty.
In
accordance with the principle of proportionality, as set
out in that Article, this Directive does not go beyond
what is necessary to achieve that objective,

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, the
invention having one or more 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 field of technology which is new and not
obvious to a person skilled in the art. The technical contri-
bution shall be assessed by consideration of the difference
between the state of the art and the scope of the patent
claim considered as a whole, which must comprise tech-
nical
these are
accompanied by non-technical features.

irrespective of whether or not

features,

Article 3

Conditions for patentability

In order to be patentable, a computer-implemented invention
must be susceptible to industrial application and new and must
involve an inventive step. In order to involve an inventive step,
a computer-implemented invention must make a technical
contribution.

Article 4

Exclusions from patentability

A computer program as such cannot constitute a patent-

1.
able invention.

2.
A computer-implemented invention shall not be regarded
as making a technical contribution merely because it involves
the use of a computer, network or other programmable appa-
ratus. Accordingly,
inventions involving computer programs,
whether expressed as source code, as object code or in any
other form, which implement business, mathematical or other
methods and do not produce any technical effects beyond the
normal physical
interactions between a program and the
computer, network or other programmable apparatus in which
it is run shall not be patentable.

Article 5

Form of claims

1. 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

2.
A claim to a computer program, either on its own or on
a carrier, shall not be allowed unless that program would,
when loaded and executed in a programmable computer,
programmable computer network or other programmable
apparatus, put into force a product or process claimed in the
same patent application in accordance with paragraph 1.

Article 6

Relationship with Directive 91/250/EEC

The rights conferred by patents granted for inventions within
the scope of this Directive shall not affect acts permitted under
Articles 5 and 6 of Directive 91/250/EEC, in particular under
the provisions thereof in respect of decompilation and inter-
operability.

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Article 7

Monitoring

Article 9

Impact review

The Commission shall monitor the impact of computer-imple-
mented inventions on innovation and competition, both within
Europe and internationally, on Community businesses, espe-
cially small and medium-sized enterprises, on the open-source
community and on electronic commerce.

In the light of the monitoring carried out pursuant to Article 7
and the report to be drawn up pursuant to Article 8, the
Commission shall review the impact of
this Directive and,
where necessary, submit amending proposals to the European
Parliament and the Council.

Article 8

Report on the effects of the Directive

The Commission shall report to the European Parliament and
the Council by … (*) on:

(a) the impact of patents for computer-implemented inventions

on the factors referred to in Article 7;

(b) whether the rules governing the term of the patent and the
determination of the patentability requirements, and more
specifically novelty, inventive step and the proper scope of
claims, are adequate, and whether it would be desirable and
legally possible having regard to the Community's interna-
tional obligations to make modifications to such rules;

(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 measures are desirable to
address such difficulties;

(d) whether difficulties have been experienced in respect of the
relationship between the protection by patent of computer-
implemented inventions and the protection by copyright of
computer
in Directive
91/250/EEC and whether any abuse of the patent system
has occurred in relation to computer-implemented inven-
tions;

programs

provided

for

as

(e) how the requirements of this Directive have been taken
into account in the practice of the European Patent Office
and in its examination guidelines;

(f) the aspects in respect of which it may be necessary to
prepare for a diplomatic conference to revise the European
Patent Convention;

(g) the impact of patents for computer-implemented inventions
on the development and commercialisation of interoperable
computer programs and systems.

Article 10

Implementation

1. Member States shall bring into force the laws, regulations
and administrative provisions necessary to comply with this
Directive by … (**). They shall forthwith inform the Commis-
sion thereof.

When Member States adopt those measures, they shall contain
a reference to this Directive or shall be accompanied by such a
reference on the occasion of their official publication. The
methods of making such reference shall be laid down by
Member States.

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

Article 11

Entry into force

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

Article 12

Addressees

This Directive is addressed to the Member States.

Done at Brussels,

For the European Parliament

The President

…

For the Council

The President

…

(*) Five years after the date of entry into force of this Directive.

(**) Two years from the date of entry into force of this Directive.

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STATEMENT OF THE COUNCIL'S REASONS

I. INTRODUCTION

1. On 20 February 2002, the Commission submitted a proposal for a European Parliament and
Council Directive on the patentability of computer-implemented inventions (1), based on Article
95 of the EC Treaty.

2. The Economic and Social Committee delivered its opinion on 19 September 2002 (2).

3. The European Parliament delivered its opinion at first reading on 24 September 2003 (3).

4. The Commission has not submitted an amended proposal.

5. The Council adopted its common position according to Article 251 of the EC Treaty on 7 March

2005.

II. AIM

6. The proposed Directive aims at harmonising national patent laws with respect to the patentability
of computer-implemented inventions and at making the conditions of such patentability more
transparent.

III. COMMON POSITION

Recitals

7. The Council has amended or merged a number of recitals appearing in the Commission's proposal
and has adopted a few additional ones. In so doing, the Council has taken on board in full or in
part, or following reformulation, the European Parliament's amendments 1, 2, 88, 3, 34, 115, 85,
7, 8, 9, 86, 11, 12 and 13. Reference to the main changes in the recitals is made below under the
relevant Articles.

Articles

Article 1 (Scope)

8. Article 1 was accepted as in the Commission's proposal. The European Parliament has not

suggested any amendments to this Article either.

Article 2 (Definitions)

9. On point (a), the Council has partly followed the European Parliament's amendments 36, 42 and
117 by deleting the words ‘one or more prima facie novel’ from the definition of ‘computer-imple-
mented invention’, on the grounds that these are redundant and risk creating confusion as regards
their relationship with the novelty test, which applies at the stage of the examination of the
patentability of any invention.

10. On point (b), the Council:

— replaced ‘technical field’ with ‘field of technology’, which is the term commonly used in inter-

national agreements on patent law, such as the TRIPS Agreement;

— inserted the words ‘new and’, in order to clarify the criteria for ‘technical contribution’;

— added a second sentence, which is basically the provision of Article 4(3) of the Commission
proposal slightly amended in order to clarify that even if non-technical features may be taken
into consideration when assessing the technical contribution of a given computer-implemented
invention, it is indispensable that any patent claim comprises technical features as well. This
idea concurs with part of the European Parliament's amendments 16, 100, 57, 99, 110 and
70.

(1) OJ C 151 E, 25.6.2002, p. 129.
(2) OJ C 61, 14.3.2003, p. 154.
(3) OJ C 77 E, 26.3.2004, p. 230.

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Article 3 of the Commission proposal (Computer-implemented inventions as a field of tech-
nology)

11. This Article imposed on Member States the obligation of ensuring in their national

law that
computer-implemented inventions are considered to belong to a field of technology. In accordance
with the European Parliament's amendment 15, the Council has decided to delete Article 3, consid-
ering that a general obligation of this nature would be difficult to transpose into national law. In
exchange, the Council has decided to reinforce in recital 13 the relevant statement contained in
recital 11 of the Commission proposal.

Article 3 (Article 4 of the Commission proposal) (Conditions for patentability)

12. The Council merged the first two paragraphs of Article 4 of the Commission proposal into a
single paragraph, while introducing minor drafting amendments with a view to improving the
clarity of the text. The new text follows word by word the wording of Article 4(1) as proposed in
the European Parliament's amendment 16.

13. As already mentioned, paragraph 3 of Article 4 of the Commission proposal has been incorpo-
rated in the definition of 'technical contribution' under Article 2(b), as it was felt that this belongs
to the definitions rather than in an Article entitled 'Conditions for patentability'.

Article 4 (Exclusions from patentability)

14. In order to avoid any misunderstanding, the Council has included in paragraph 1 of this Article a
clear statement to the effect that a computer program as such cannot constitute a patentable
invention.

15. Paragraph 2, which corresponds to amendment 17 of the European Parliament, aims at clarifying
the limits of what can be patentable under the present Directive and has to be read in conjunction
with recitals 14 to 16, which correspond to the European Parliament's amendments 85, 7 and 8.
The Council has however inserted the terms ‘whether expressed as source code, as object code or
in any other form’ in order to clarify better what is meant by ‘invention involving computer
programs’.

Article 5 (Form of claims)

16. Paragraph 1 was accepted as in the Commission's proposal.

17. Paragraph 2 was added in order to clarify that in certain circumstances and under strict conditions
a patent can cover a claim to a computer program, be it on its own or on a carrier. The Council
considers that this would align the Directive on standard current practice both at the European
Patent Office and in Member States.

Article 6 (Relationship with Directive 91/250/EEC)

18. The Council has taken on board the European Parliament's amendment 19, considering that this is
clearer than the text of the Commission's proposal. It has removed references to provisions
concerning semiconductor topographies or trade marks as these were considered as irrelevant in
this context.

19. The Council did not take on board the European Parliament's amendment 76, considering that
this was too open-ended and would be contrary to the TRIPS Agreement. The Council considered
that the interoperability issue is already sufficiently covered by Article 6, as well as by the applica-
tion of general competition rules. This is clearly explained in recitals 21 and 22 of the Council's
common position.

Article 7 (Monitoring)

20. The Council has taken on board the European Parliament's amendment 71.

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Article 8 (Report on the effects of the Directive)

21. The Council has maintained the text of the Commission proposal and has inserted the following

additional elements:

— point (b): the words ‘the term of the patent and’ have been added, as suggested by the Euro-
pean Parliament in amendment 92; furthermore, bearing in mind the European Parliament's
amendment 25, the Council has introduced language relating to the Community's international
obligations;

— point (d): the Council has taken on board the European Parliament's amendment 23;

— point (e): the Council has taken on board the European Parliament's amendment 26;

— point (f): the Council has taken on board the European Parliament's amendment 25, but has
removed the reference to the Community patent, on the grounds that such a reference would
be irrelevant in this context;

— point (g): the Council has taken on board the substance of the European Parliament's amend-

ment 89, while opting for a clearer wording.

Article 9 of the Council common position (Impact assessment)

22. The Council took on board European Parliament's amendment 27.

Article 10 (Article 9 of the Commission proposal) (Implementation)

23. Unlike the European Parliament, which has opted for an implementation period of 18 months

(amendment 28), the Council has opted for an implementation period of 24 months.

Articles 11 (Entry into force) and 12 (Addressees) (Articles 10 and 11 of the Commission
proposal)

24. The Council has taken on board the text of the Commission's proposal.

IV. EUROPEAN PARLIAMENT AMENDMENTS NOT TAKEN ON BOARD

25. After having given them full consideration, the Council has not been able to take on board Euro-
pean Parliament amendments 88 (first sentence), 31, 32, 112, 95, 84, 114, 125, 75, 36, 42, 117,
107, 69, 55/rev, 97, 108, 38, 44, 118, 45, 16, 100, 57, 99, 110, 70 (partly), 60, 102, 111, 72,
103, 119, 104, 120, 76, 24, 81, 93, 94 and 28.

26. The Council considered that some of these amendments were superfluous (amendments 88 (first
sentence), 31, 75, 94), unclear and potentially confusing (amendments 36, 42, 117, 72, 104,
120), had no direct link with the issues at stake (amendments 95, 24, 81), did not reflect estab-
lished practice (amendments 32, 112, 16, 100, 57, 99, 110, 70, 102, 111), or would be contrary
to the international obligations of the European Community and its Member States under the
TRIPS Agreement as well as to the general principles of patent law (84, 114, 125, 107, 69, 55/
rev, 97, 108, 38, 44, 118, 45, 60, 103, 119, 76, 93).

V. CONCLUSIONS

27. In its common position, the Council has taken over a considerable number of amendments
proposed by the European Parliament. Throughout the common position, the Council has sought
to strike a reasonable and workable balance between the interests of rightholders and those of
other parties concerned. The overall balance of the Council's common position has been acknowl-
edged by the Commission, which has accepted it as a satisfactory compromise package.