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 adoption of a directive of the European Parliament and Council on the patentability of computer-implemented inventions
Date: 2005-03-09
Institutions: European Commission
Subjects: computer assisted design, patent, patent law, software

COMMISSION OF THE EUROPEAN 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 adoption of a directive of the European 
Parliament and Council on the patentability of computer-implemented inventions 

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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 adoption of a directive of the European 
Parliament and Council on the patentability of computer-implemented inventions 

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BACKGROUND 

Date of transmission of the proposal 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 European Parliament, first reading3: 

24 September 2002 

Date of adoption of the common position4: 

7 March 2005 

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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  law  dealing  with  inventions  which  rely  on 
computers  for  their  performance.  The  Directive  will  bring  under  the  supervision  of  the 
European Court of Justice the rules applicable by national courts and patent offices charged 
with assessing the validity of patents and applications in this field. Given that many patents in 
this  field  are  granted  by  the  European  Patent  Office,  the  Administrative  Council  of  the 
European  Patent  Organisation  could  be  invited  to  consider  adapting  the  Implementing 
Regulations of the European Patent Convention. 

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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 Parliament’s amendments at first reading. The Commission has 
indicated that it accepts the common position, even though this differs from the Commission’s 

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OJ No C 151, 25.6.2002, p.129 COM (2002) 92 final 
OJ No C 61 , 14.3.2003, p.154 
11503/03 CODEC 995 PI 70 
insert reference 

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original  proposal  in  certain  respects.  In  general,  the  Commission  believes  that  the  common 
position  strikes  an  acceptable  balance  between  the  interests  of  right  holders  and  those  of 
competitors and consumers (including in the open 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 particular on small and medium-sized enterprises and 
on the open source community. 

As far as the Commission is concerned, the directive continues to address the key objective 
stated  in  the  explanatory  memorandum  of  the  Commission’s  proposal,  namely  the 
harmonisation  of  patent  law  between  the  Member  States  and  the  resolution  of  legal 
uncertainty  in  this  field.  It  is  crucial  to  note  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 this 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 Community 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 and the European Patent Office in Munich.  

3.1.1  Computer program product claims 

Although the Commission’s proposal did not explicitly permit claims on computer programs 
on their own or on carriers, the Commission has accepted Article 5(2) of the common position 
as this has to be understood 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 explicitly laid out in Article 4(1)) is open to 
differing interpretations, the text may need further clarification. 

Acts  relating  to  computer  programs  on  their  own  or  on  carriers  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 facilitate enforcement of legitimate rights by ensuring that 
such  acts  may  constitute  direct,  rather  than  just  contributory,  infringements.  This  is 
particularly important in cases of infringements across national boundaries as Member States’ 
courts  do  not  have  jurisdiction  over  contributory  infringements  occurring  outside  their 
national territory. 

In any case, the final part of Article 5(2) makes clear that the claim on the computer program 
on its own or on a carrier has to put in force a patentable product or process 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 Article 4 paragraphs 1 and 2.  

3.1.2. 

Interoperability 

The  Commission  is  strongly  committed  to  the  promotion  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 inventions which are new, inventive 
and  industrially  applicable.  It  is  important  to  note  that  the  requirement  for  sufficient 

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disclosure  of  a  patented  invention  may  facilitate  access  to  information  useful  in  achieving 
interoperability of computer-implemented inventions. 

The  Commission  affirmed 
the  policy  objective  of  promoting 
interoperability  and  fostering  innovation  by  explicitly  preserving  in  Article  6  existing 
interoperability exceptions under copyright law 

its  commitment 

to 

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 Article 2). As expressed in a statement 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 that safeguards for interoperability have been 
strengthened in Article 8(d) and (g) in terms 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 institutions in first reading.  

Furthermore,  Recital  21  recalls  that  a  dominant  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 Treaty. The application of these 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 solve 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 idea that the technical contribution must be 
new) and some of the text of amendment 76 has been 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. 

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Recital 8 

Council  has  incorporated  Parliament’s  amendment  3  and  the  second  half  of  amendment  88 
into this new Recital. It was felt that amendment 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  with  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,  taking  inspiration  from  the  text  of  Parliament’s 
amendment 76, to address the issue of interoperability. 

Recital 22 

Council accepted Parliament’s amendment 13. 

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Article 2 

The  Council  deleted  the  Commission’s  reference  to  ‘prima  facie  novel’  features  in  Article 
2(a). In Article 2(b), the Council added an element of Amendment 107 (=69) which defines a 
technical contribution as being new and added a new sentence, transferred from Article 4(3) 
of the Commission’s proposal, to define how the technical contribution is assessed. 

Article 3 of the Commission’s proposal (deleted) 

Council accepted Parliament’s amendment 15. 

Article 3 

Council  restated  and  condensed  Article  4  paragraphs  (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  patentable  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 Directive 91/250/EEC which are applicable 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 reference 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. 

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Article 10 

The  Council  stipulated  a  transposition  period  of  twenty  four  months  (not  defined  in  the 
Commission’s proposal). Parliament 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 certain 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 that 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 the substance is broadly restated in Recital 
16 as introduced by Parliament’s amendment 8. 

Recital 21 

The Commission supports the new wording as it reconfirms that an appropriate way to deal 
with  potential competition issues between enterprises  is through  the  established  competition 
rules.  The  application  of  Articles  81  and  82  therefore  contributes  to  achieving  objectives 
underlying  the  present  directive.  This  Recital  usefully  gives  an  example  of  a  potential 
competition  problem  involving  interoperability,  specifically  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. 

Article 2 

The insertion of the requirement that the technical contribution be new is acceptable. 

Article 4 

The new paragraph 1 of this Article states the existing law and, 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 interoperability provisions precisely so the Commission is 
in favour of this clarifying addition. 

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Article 10 

Although  the  Commission  would  have  preferred  the  swifter  transposition  envisaged  by 
Parliament, it can accept twenty four months as the deadline for implementation. 

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CONCLUSION 

The Commission considers that Council’s common 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  while  allowing  right  holders  to  enforce  their  rights  in  an 
effective yet proportionate way against 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 efficient 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 directive which meets these objectives and is ready to 
engage  further  with  both  Parliament  and  Council  on  key  issues  concerning  the  directive, 
notably in the light of the Commission's commitments to the promotion of interoperability 

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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 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.” 

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