An Engineer´s Perspective of Patents

(IPRinfo 2/2008)

Rosa Maria Ballardini
HANKEN-Swedish School of Economics and Business Administration
and INNOCENT Graduate School, IPR University Center

Reviewed work: Philip Leith: Software and Patents in Europe, Cambridge University Press, 2007, 203 pp. ISBN 978-0-521-86839-6

The European Patent Convention (EPC) Article 52(2) & (3) explicitly excludes computer programs ”as such” from patent law. However, the difficulty in pinpointing a reasonable interpretation of such a criterion has emerged since the early case law of the EPO Boards of Appeal.

The mental efforts of the Boards struggling to develop the concept of ”technical contribution or effect” an invention makes to the know arts as to interpret the ”as such” exclusion, is a clear demonstration of that.

In his book Philip Leith puts forward an engineer’s perspective of the issue, emphasizing that the approaches followed thus far both at the EPO and by the British courts, have been missing a fundamental element, i.e. the programmer’s point of view. On these grounds, he suggests a more programming-centric approach, which recognizes that software examination requires strategies different from other technical fields.

Of particular interest is the author’s question in Chapter VI: ”Is there a third way between patent and copyright to protect software?” Specifically, he analyses three options:
a) The Manifesto’s solution put forward by Samuelson, Davis, Kapor and Reichman in the 1990s, arguing in favor of a sui generis protection for software;
b) The Petite patent Act;
c) The European utility model.

He concludes that all these alternatives can only be additional, not substitute, to the patent system. Inventors will still keep on seeking for patent protection for their ideas, even if other options are made available. Although it appears that the current patent system does not work properly for software inventions, the reasons still remain somewhat unclear to the researchers who have studied the problems.

On Leith´s opinion, though, what is clear is that adding alternative means of protection might lead to a more fragmented and less transparent system.

On the whole, Leith’s book is interesting, informative and generally well researched with respect to the main legal and technical issues surrounding the exclusion of computer programs from European patent law. However, the book suffers from a number of shortcomings which detract from its overall effectiveness.

Most importantly, the perspective considered is focused on a British point of view. The major EPO case law is analyzed, but it certainly does not represent the main focus of the book. Hardly any cases from other European national jurisdictions are exposed.

An interesting suggestion comes out in the last chapter of the book, where the author questions on whether software should or should not be protected under patent law in Europe. He concludes by saying that the real question should rather be ”what (and how broadly) software should be afforded patent protection”. However, quite disappointingly, Leith does not attempt to provide any workable answer to this question.

Despite these reservations, this is a worthy and stimulating read, which draws profitably from the author’s technical and legal experience. The book represents a useful tool for anyone who is interested in issues related to computer programs patents in Europe.