(1.1) Travaux préparatoires for the EPC 2000

In the year 2007 an adapted version of the European Patent Convention (EPC) entered into force. This new Convention is known as the EPC 2000. The EPC 2000 includes, among other things, amendments to Art. 52 EPC, which, as you know, plays an important role in computer-implemented inventions. In the end Art. 52(1) EPC was amended (introduction of the term “all fields of technology”) but Art. 52(2) EPC (list of non-inventions, inter alia "programs for computers") remains unchanged. In particular, it was discussed whether the term "programs for computers" should be deleted from the list in Art. 52(2) EPC. The main argument for not deleting the term was that the possible regulation of patent protection for computer programs by EU law (rejected by the European Parliament on 6 July 2005) should not be anticipated. Below you will find an overview of the travaux préparatoires and of the decisive document.

Travaux préparatoires consist of a plurality of documents

The negotiations leading up to the EPC 2000 are recorded in travaux préparatoires (= official record of the negotiation). The travaux préparatoires consist of the following documents:

80 documents prepared by the European Patent Organisation (EPO), national delegations, and user groups. These documents form the basis of the preparatory work which took place mainly in the Administrative Council and in the Committee on Patent Law (body of the Administrative Council). The Administrative Council is one of the two organs of the EPO, the other being the EPO. The Council acts as the Office’s supervisory body and is composed of the representatives of the EPO member states.
50 documents submitted for discussion during the 10 days of the Diplomatic Conference in November 2000.
Minutes of the meetings of the Administrative Council and the Committee on Patent Law.

In the figure below you see an overview about the negotiation process regarding Art. 52 EPC:

The decisive documents are disclosed in the following in more detail. The document „Basic Proposal for the Revision of the EPC (MR/2/00)“ of the travaux préparatoires forms the most important reference document.

"Basic Proposal for the Revision of the EPC" regarding Art. 52 EPC

The document Basic Proposal for the Revision of the EPC (MR/2/00) was drawn up by the Administrative Council and addresses the Revision Conference for consideration. The document was issued on October 13, 2000.

MR/2/00 is hence – as part of a subsequent agreement between the contracting states concerning the EPC – a valid instrument for construing the Convention according to the traditional rules of interpretation (see decision G 5/83 (supra), Reasons No. 5, rule (4), and the corresponding Article 31 of the Vienna Convention on the Law of Treaties of 1969; T 154/04, Reasons, point 8).

The following is an extract from this document MR/2/00, page 43, wherein in the Explanatory remarks all the relevant preparatory documents are listed, thus enabling you to retrieve the legislative history of the provision. The documents of the Explanatory remarks are discussed further below.

MR/2/00: ARTICLE 52 EPC

Explanatory remarks (Preparatory documents: CA/PL 6/99; CA/PL PV 9, points 24-27; CA/PL PV 14, points 143-156; CA/100/00, pages 37-40; CA/124/00, points 12-16; CA/125/00, points 45-73)

Article 52(1) EPC has been brought into line with Article 27(1), first sentence, of the TRIPs Agreement with a view to enshrining "technology" in the basic provision of substantive European patent law, clearly defining the scope of the EPC, and making it plain that patent protection is available to technical inventions of all kinds.
In light of the new wording of Article 52(1) EPC, it may be queried whether the provisions of Article 52(2) and (3) EPC, which enumerate subject-matter or activities not to be regarded as inventions, are still needed.
The Committee on Patent Law and the Administrative Council have advocated the deletion of programs for computers from Article 52(2)(c) EPC. The EPO and the Boards of Appeal have always interpreted and applied the EPC in such a way that this exception in no way excludes appropriate protection for software-related inventions, ie inventions whose subject-matter consists of or includes a computer program. Indeed, more recent decisions of the Boards of Appeal (see T 1173/97 – Computer program product/IBM, OJ EPO 1999, 609) have confirmed that computer programs producing a technical effect, as a rule, are patentable subject-matter under the EPC.
Nevertheless, the point must be made that patent protection is reserved for creations in the technical field. This is now clearly expressed in the new wording of Article 52(1) EPC. In order to be patentable, the subject-matter claimed must therefore have a "technical character" or to be more precise – involve a "technical teaching", ie an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means. It is on this understanding of the term "invention" that the patent granting practice of the EPO and the jurisprudence of the Boards of Appeal are based. The same considerations apply to the assessment of computer programs. Thus, it will remain incumbent on Office practice and case law to determine whether subject-matter claimed as an invention has a technical character and to further develop the concept of invention in an appropriate manner, in light of technical developments and the state of knowledge at the time.
Article 52(4) EPC is deleted and transferred to Article 53 EPC (see explanatory remarks to Article 53(c) EPC).

In T 154/04, Reasons, point 8 it is inferred from point 4 above: "The Basic Proposal clearly confirms that patent protection should be available to technical inventions of all kinds (MR/2/00e, page 43, No. 1) and that the technical character is a mandatory requirement for any patentable invention."

Document CA/PL 6/99 drawn up by the EPO’s President

The document CA/PL 6/99 (mentioned in the Explanatory remarks of the Basic Proposal for the Revision of the EPC mentioned above) – issued on March 9, 1999 – outlines the legislative history of Article 52(1)-(3) EPC and describes the Office’s granting practice and the case law of the boards of appeal, in particular with regard to the patentability of computer programs and software-related inventions. The document was drawn up by the EPO’s President and addresses the Committee on Patent Law for opinion.

On page 3, point 9 it is mentioned that the following in particular are patentable:

methods for operating a computer with a particular program if a technical effect is achieved thereby,
a known computer operated by means of a particular program if a technical effect is achieved thereby,
program-controlled manufacturing or working processes,
methods for processing data representing technical structures or processes.

On page 4, point 9 it is mentioned that for some time now there has been a growing body of opinion in favour of deleting "programs for computers" from Article 52(2) upon a revision of the Convention. Arguments for the deletion are:

Article 27(1) of the TRIPs Agreement, according to which the member states of the World Trade Organization must ensure that patents are "available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application". This provision of the TRIPs Agreement, it is argued, means that patent protection must be unrestrictedly available for computer programs, as the latter should be viewed as belonging to the realm of technology and thus as patentable. In conjunction with computer programs, doubts have also been raised as to whether the exclusion of mathematical methods and doing business under Article 52(2) EPC is justifiable.
Article 27(1) of the TRIPs Agreement intentionally provides no definition of the term "invention". This allows WTO member states to understand and interpret the term "invention" in accordance with their own legal traditions, and thus to exclude some of the results of creative activity from patent protection. At the same time, the phrase "inventions … in all fields of technology" makes the link between inventions and technology particularly plain and clearly delimits the scope of patent protection. The TRIPs Agreement thus does not require a departure from the tried and tested principle whereby, for an invention to be patentable, it has to involve a technical teaching or be of a technical character.
The argument is not convincing that computer programs are always of a technical character. This is not the case merely because they are intended for use in the operation of computers. A computer program may or may not involve a technical teaching. On the other hand, the current wording of Article 52 EPC does not completely exclude the possibility of a computer program being deemed not to be patentable even if it is of a technical character.
It is claimed that the exclusion of computer programs (as such) under Article 52 EPC gives the wrong impression that patent protection is not available at all for software-related inventions. This could prevent inventors and enterprises unfamiliar with patent law and the practice of the EPO from seeking patent protection for software innovations which indeed qualify for such protection. The deletion of computer programs from Article 52(2) EPC would therefore act as a signal to software developers and promote patent awareness.

Proposed revision of Art. 52 EPC:

It is proposed that paragraphs 2 and 3 of Article 52 EPC be deleted, as they are no longer necessary or desirable. If Article 52(1) EPC were to be amended as proposed, thus making it clear that only technical inventions are patentable, there would no longer be any need for the exceptions in paragraph 2. The requirement on which patentability depends, namely that an invention must represent a technical teaching or have a technical character, is sufficient to delimit patentable inventions from creations which are not eligible for patent protection.
The patent laws in existence prior to the PCT and the EPC did not contain any provisions comparable to Article 52(2) EPC. It was therefore the task of the patent offices and courts to elaborate workable criteria for determining patentability. This they did successfully, taking into account not only new technical developments, but also changes in legal thinking. This was why, for example, the Swiss legislator did not incorporate the list of exceptions in Article 52(2) EPC into Swiss national patent law when the latter was brought into line with the EPC.
The deletion of Article 52(2) and (3) EPC would get round the problems associated with the application and interpretation of any exception to patentability (what is a computer program as such?), but would not mean that the subject-matter and activities currently listed in Article 52(2) would then suddenly become patentable. Discoveries, scientific theories, mathematical methods, aesthetic creations, and purely mental or business acts, in particular, will continue not to be eligible for patent protection as long as they do not involve a technical teaching. Thus any fundamental change in current granting practice and case law is unlikely to occur.
Patentability would continue to depend solely on whether the claimed subject-matter, considered as a whole, had a technical character or not. The task of determining this can be left to the departments of the EPO, its boards of appeal and the national courts, who are best equipped to do it. They are better able than the legislator to take the right decision in each individual case, as well as to take account of technical advances and thus to promote the pragmatic development and harmonisation of European patent practice. If necessary, special interpretative provisions could be incorporated into the EPC’s Implementing Regulations.

Document CA/PL PV 9, minutes of the 9th meeting of the Committee on Patent Law

The document CA/PL PV 9 (mentioned in the Explanatory remarks of the Basic Proposal for the Revision of the EPC mentioned above) is the minutes of the 9th meeting of the Committee on Patent Law in March 16-17, 1999. In the document points 24-27 are relevant regarding Art. 52 EPC. Especially, the input of the president of the EPO according document CA/PL 6/99 is considered. Please find below the points mentioned (with bold added by the author of this article):

Point 24: The Office presented its proposal to amend Article 52(1) EPC and delete Article 52(2) and (3) EPC, stressing that although this might seem radical the aim was more to deregulate the EPC than to change Office practice on patentability. The wording of Article 27(1) TRIPs, and the likelihood of an EU legislative initiative on the patentability of computer programs, were further incentives to amend the EPC.

Point 25: Delegations’ interventions on the various aspects of the proposal were as follows:

The idea of bringing Article 52(1) EPC into line with Article 27(1) TRIPs was approved in principle by most delegations, but the discussion showed certain doubts about the fact that the French wording proposed for Article 52(1) EPC ("dans tous les domaines de la technique") differed from that used in Article 27(1) TRIPs ("dans tous les domaines technologiques"), and about including a definition of “invention” in the Implementing Regulations.
A majority of delegations supported the proposed deletion of computer programs from the list of non-patentable subject-matter in Article 52(2)(c) EPC. The other delegations thought Article 52(2) and (3) should be deleted altogether, as proposed by the Office, to make clear that the concept of "invention" was not being widened. The European Commission representative said the EC directive currently being prepared went in the same direction as the Office’s proposal.
Several delegations had reservations about leaving it to the case law to exclude the subject-matter currently listed in Article 52(2) EPC. It was suggested that a definition of "invention" be drafted with reference to that list. This definition should go into the Implementing Regulations.

Point 26: The Office said deleting computer programs on their own might give the wrong impression that they were patentable regardless of their technical contribution to the art. It was doubtful whether any definition of invention would be workable in practice. Shifting the Article 52(2) list – minus the reference to computer programs – into the Implementing Regulations seemed a suitable way of addressing the reservations expressed about complete deletion of Article 52(2) and (3).

Point 27: Summing up, the chairman noted that in the light of the discussion the Office would submit a revised proposal for a new Article 52 EPC.

Document CA/PL PV 14, minutes of the 14th meeting of the Committee on Patent Law

The document CA/PL PV 14 (mentioned in the Explanatory remarks of the Basic Proposal for the Revision of the EPC mentioned above) is the minutes of the 14th meeting of the Committee on Patent Law in July 3-6, 2000. In the following you can find points 143-156 considering Art. 52 EPC:

Point 143: The United Kingdom delegation advised against approving the proposed amendment to Article 52(2)-(4) EPC. It was unacceptable for the United Kingdom delegation, at least for the time being. In view of the key importance of the regulation and the EU work on a directive on the subject, it would be best to wait and have a more in-depth debate on the matter. If an EU directive were adopted, revised Articles 33 and 35 EPC could serve as a "fallback" by making it possible to amend the regulation without necessitating a diplomatic conference. Deleting the provision on computer programs from the EPC might send out the wrong signal about a deregulation of the system. The UK delegation’s reservation also related to the fact that this key provision of the EPC should remain in the Convention. It therefore felt that Article 52(2)-(4) EPC should remain unchanged for the time being. It supported the proposed amendment of Article 52(1) EPC provided that it was brought into line with the TRIPs provisions. The Spanish and Swedish delegations agreed with the UK delegation regarding the revision of Article 52(2) and (3).

Point 144: The Swiss delegation was of the different opinion that Article 52(2) and (3) EPC should be deleted entirely. Once Article 52(1) EPC was amended, a step it approved of, exclusion provisions would no longer be necessary as the criterion "technical character" of the invention was enough to differentiate it from nonpatentable creations. In Switzerland Article 52(2) and (3) EPC would never have been implemented in national law without diverging from EPO practice. No new input was to be expected from the EU provision as it would simply codify the status quo. The Swiss delegation supported the epi proposal in Info 2/PL 14, which envisaged the complete deletion of Article 52(2) and (3) EPC.

Point 145: The epi representative referred to Info 2/PL 14 and said it was in favour of deleting paragraph 2 because it was outdated and a formulation of paragraph 1 that was in line with TRIPs would be sufficient. It should be left to the EPO boards of appeal and the national courts to develop their own case law on issues relating to nonpatentable inventions.

Poin 146: The French delegation said there was a discrepancy between the French version of Article 52(1) and TRIPs. Article 27(1) TRIPs should be reflected in Article 52(1) EPC. It supported deleting the reference to computer programs from Article 52(2) EPC. The list of non-patentable inventions should inter alia concur with public opinion and remain in the Convention. Adding a definition of the term "invention" to the Implementing Regulations would not be the preferred alternative of the French delegation. While the rationale behind the intended transfer of the provision in Article 52(4) EPC to Article 53 EPC was clear, it should nevertheless remain in Article 52 EPC. The Monegasque delegation concurred.

Point 147: The Irish delegation agreed to the proposal to bring Article 52(1) EPC into line with the TRIPs provisions. It could not yet adopt a definitive position on Article 52(2) and (3). It might be acceptable to transfer it to the Implementing Regulations but complete deletion was out of the question. The provision governing computer programs could be deleted from the Convention. A definition of the term "invention" was perfectly acceptable as a provision in the Convention as conflicts under Article 164(2) EPC might otherwise arise. There were considerable objections, also in relation to the appeal boards’ case law (see T 465/92), against including what is known as the "problem-solution approach" in such a definition. The incorporation of Article 52(4) EPC into Article 53 EPC was supported.

Point 148: The Danish delegation favoured the UK delegation approach. It agreed to the proposed amendment of Article 52(1) EPC. The provision governing computer programs in the second paragraph should be deleted. The "Explanatory remarks" should state how far-reaching the consequences of removing computer programs from the list of non-inventions were expected to be. A study was currently being carried out in Denmark on whether the grounds for exclusion should be deleted entirely from the Patent Law. As this study had not yet been concluded, it could not yet adopt a definitive position on the matter. Paragraph 4 should not now be transferred to another article.

Point 149: The proposed new version of Article 52(1) EPC to harmonise it with the TRIPs provision met with the broad approval of the other delegations. Some delegations (AT, CY, ES, FI, GR, LU, NL, SE) and the UNICE representative favoured the formulation in the Basic Proposal while other delegations (BE, IT, MC, PT) sided with the French delegation in its preference for a formulation that was closer to the wording of the relevant TRIPs provision.

Point 150: With regard to the list of non-inventions in paragraphs 3 and 4, it became apparent as the discussion continued that the delegations’ opinions differed greatly from one another. Some delegations (AT, GR, IT) and the UNICE representative favoured the complete deletion of the provisions from the Convention. Other delegations, however, remained committed to a legislative provision. Certain delegations (CY, DE, DK, ES, FI, FR, LU, MC, PT) said the provision should remain in the Convention because of its fundamental importance; other delegations (BE, GR, IT and NL) considered the proposed ruling in the Implementing Regulations to be adequate.

Point 151: There was broad support from the delegations for the deletion of the computer program provision in paragraph 2(c). The Netherlands delegation made the point that the problems concerning the protection of computer programs could not simply be solved by deleting the provision in Article 52(2) EPC as other regulations, eg the EU directive, could affect the issue. The deletion should be explained in greater detail in the "Explanatory remarks". The Luxembourg delegation, however, was against deleting the computer program provision from the list of non-inventions, saying in support that a new version should not create the impression that a change in existing practice was being sought. The German delegation suggested that a decision on whether or not to delete the provision concerning the non-patentability of computer programs should be taken by the Administrative Council rather than the committee, given that it was a political issue.

Point 152: The majority of delegations (AT, BE, CY, DE, ES, GR, IT, LU, PT, SE) agreed to the transfer of the current provision in Article 52(4) EPC to the revised Article 53 EPC as this step was a logical legal amendment. The UNICE representative informed the committee that EFPIA wished to go a step further and delete the fourth paragraph entirely.

Point 153: A definition of the term “invention” above and beyond the proposed formulation in Article 52(1) EPC was considered by the delegations to be neither necessary nor useful. Should a definition be incorporated, some delegations (BE, LU, PT and SE) felt that it should appear in the Convention. Point 154: The Belgian delegation stated that it could not yet adopt a definitive position.

Point 155: The Office responded to the delegations’ comments and stressed that all proposals made by the committee were subject to political scrutiny. Although the deletion of the computer program provision would not pose any problem, there were questions about how to deal with the rest of the provision. Paragraphs 2 and 3 should therefore be put in square brackets except for the computer program provision, which should definitely be deleted. The revised Basic Proposal could then form the basis for discussions at the next Administrative Council meeting at the intergovernmental conference in London. There was unqualified support for the amendment of the first paragraph apart from a difference of opinion concerning the terms "domaine de la technique" and "domaine technologique". The proposal to provide a separate definition of the term "invention" would be dropped. Article 52(4) EPC would be retained as it appeared in the Basic Proposal. In a comment directed at the French delegation, the Office stated that if the provision were to remain in place as Article 52(4) EPC, the old wording would have to be retained as it would have to be formulated there as a quasi-definition through a fiction, whereas, if it were transferred to Article 53 EPC, it could be formulated as an exception. This was also in line with the TRIPs approach.

Point 156: The Chairman summarised the outcome of the debate. The delegations took the following positions on the various questions:

15 delegations were in favour of deleting the words "programs for computers" from the list of non-patentable inventions in Article 52(2) EPC: BE, DK, FI, FR, IE, IT, ES, MC, AT, PT, NL, CH, SE, GR, CY.
8 delegations were against the principle of defining an "invention": IE, ES, DE, GB, SE, AT, MC, FR.
3 delegations were in favour of a legally binding definition of an "invention", provided that such a definition was necessary: PT, BE, LU.
3 delegations were against transferring Article 52(4) EPC to Article 53 EPC: DK, FR, MC.
With regard to a fundamental revision of Article 52(2) EPC, opinion within the committee was divided as follows:
9 delegations were in favour of retaining Article 52(2) EPC in the Convention: CY, DK, DE, ES, FI, FR, LU, MC, PT.
7 delegations were in favour of transferring the list of exceptions (noninventions) in Article 52(2) to the Implementing Regulations: BE, IE, NL, AT, CH, GR, IT.
4 delegations wanted to delete the list of exceptions entirely (no mention in either the European Patent Convention or the Implementing Regulations): GR, CH, AT, IT.

On a proposal from the chairman, it was agreed that:

Article 52 EPC in the wording appearing in the Basic Proposal was to be retained, subject to editorial adaptation of the French version to match Article 27(1), first sentence, of the TRIPs Agreement.
the words "programs for computers" were to be deleted.
opinions were divided over retaining exceptions within the Convention or transferring them to the Implementing Regulations.
the wording of the present Article 52(4) EPC was to be transferred to Article 53 EPC.

Document CA/100/00 drawn up by the EPO’s President

The document CA/100/00 (mentioned in the Explanatory remarks of the Basic Proposal for the Revision of the EPC mentioned above) is drawn up by the EPO’s President and addresses the Administrative Council for opinion and decision. It was issued on August 9, 2000. You will find an excerpt from the document regarding Art. 52 below, pages 37-40.

ARTICLE 52 EPC

Explanatory remarks (Preparatory documents: CA/PL 6/99; CA/PL PV 9, points 24-27; CA/PL 31/00, point 33)

Article 52(1) EPC has been brought into line with Article 27(1), first sentence, of the TRIPs Agreement with a view to: enshrining "technology" in the basic provision of substantive European patent law, clearly defining the scope of the EPC, and making it plain that patent protection is available to technical inventions of all kinds.
In light of the new wording of Article 52(1) EPC, it may be queried whether the provisions of Article 52(2) and (3) EPC, which enumerate subject-matter or activities not to be regarded as inventions are still needed. In any event, the deletion of computer programs from Article 52(2)(c) EPC has met with broad consensus. The EPO and their Boards of Appeal have always interpreted and applied the EPC in such a way that this exception in no way excludes appropriate protection for software-related inventions, ie inventions whose subject-matter consists of or includes a computer program. Indeed, more recent decisions of the Boards of Appeal (see T 1173/97 – Computer program product/IBM, OJ EPO 1999, 609) have confirmed that computer programs producing a technical effect, as a rule, are patentable subject-matter under the EPC. Therefore, the current exception has become de facto obsolete.
Whilst the deletion of computer programs is approved by the Committee on Patent Law, until now, there has been no agreement as to how to proceed with regard to Article 52(2) and (3) EPC. As a result, these provisions are included in the Basic Proposal in square brackets.
A majority of nine delegations in the Patent Law Committee argue that these provisions should be left in the Convention, on the grounds that they constitute core elements of European patent law.
A compromise solution endorsed by seven delegations would be to transfer Article 52(2) and (3) EPC to the Implementing Regulations. There, these provisions would not be any less binding on the EPO, the Boards of Appeal, the national courts and authorities than they are at present under the Convention itself. However, the transfer to the Implementing Regulations would render these provisions easier to adapt where legal, economic or technical developments so require.
Four delegations in the Patent Law Committee, as well as the EPO (see CA/PL 6/99) support the deletion of Article 52(2) and (3) EPC altogether. There is a long legal tradition in Europe that patent protection should be reserved for creations in the technical field. This is now clearly expressed in the new wording of Article 52(1) EPC. In order to be patentable, the subject-matter claimed must therefore have a "technical character" or to be more precise – involve a "technical teaching", ie an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means. It is on this understanding of the term "invention" that the patent granting practice of the EPO and the jurisprudence of the Boards of Appeal is based. The list of items found in Article 52(2) EPC are simply examples of non-technical "inventions", which would remain unpatentable even in the absence of this provision. Simultaneously, the deletion of Articles 52(2) and (3) EPC would avoid all the problems the interpretation of any statutory exception entails. Thus, it should be incumbent on Office practice and case law to determine whether subject-matter claimed as an invention has a technical character and to further develop the concept of invention in an appropriate manner, in light of technical developments and the state of knowledge at the time.
Article 52(4) EPC is deleted and transferred to Article 53 EPC (see explanatory remarks to Article 53(c) EPC).

Document CA/124/00, summary of decisions taken at the 81st meeting of the Administrative Council

The document CA/124/00 (mentioned in the Explanatory remarks of the Basic Proposal for the Revision of the EPC mentioned above) is a summary of decisions taken at the 81st meeting of the Administrative Council in September 5-7, 2000. You will find an excerpt from the document regarding Art. 52 below, points 12-16.

Point 12: Article 52. The Council rejected by fifteen votes to four the option foreseen in CA/100/00 of deleting entirely paragraphs (2) and (3) of Article 52 in the basic proposal (present 19; for Italy, Netherlands, Switzerland, Liechtenstein; against Belgium, Cyprus, Denmark, Germany, Ellas, Spain, Finland, France, Ireland, Luxembourg, Monaco, Austria, Portugal, Sweden, United Kingdom).

Point 13: The Council rejected by ten votes to eight with one abstention the option foreseen in CA/100/00 of deleting paragraphs (2) and (3) of Article 52 in the basic proposal and including equivalent provisions in the Implementing Regulations (present 19; for Belgium, Cyprus, Ellas, Italy, Liechtenstein, Netherlands, Austria, Switzerland; against Denmark, Germany, Spain, Finland, France, Ireland, Luxembourg, Monaco, Sweden, United Kingdom; abstention Portugal).

Point 14: No delegation voting in favour, the Council rejected a further option, namely, the omission of any reference to computer programs in paragraph (2)(c) of Article 52 and the inclusion of such a reference in the Implementing Regulations (present 19; for none).

Point 15: The Council approved by ten votes to eight with one abstention the option foreseen in CA/100/00 of deleting in the basic proposal the reference to computer programs in paragraph (2)(c) of Article 52 and keeping the remaining text of Article 52(2) and (3) unchanged (present 19; for Belgium, Cyprus, Ellas, Ireland, Italy, Liechtenstein, Monaco, Netherlands, Austria, Switzerland; against Denmark, Germany, Spain, France, Luxembourg, Portugal, Sweden, United Kingdom; abstention Finland).

Point 16: The effect of the votes was thus to delete the square brackets spanning paragraphs (2) and (3) from the text of the revised wording of Article 52 set out in CA/100/00.

Document CA/125/00, minutes of the 81st meeting of the Administrative Council

The document CA/125/00 (mentioned in the Explanatory remarks of the Basic Proposal for the Revision of the EPC mentioned above) is the minutes of the 81st meeting of the Administrative Council in September 5-7, 2000. You will find an excerpt from the document regarding Art. 52 EPC below, points 45-73.

ARTICLE 52 EPC

Point 45: The Office introduced the proposed amendments, explaining that the forthcoming Directive should not impact on the proposed revised wording of Article 52(2), which omitted reference to computer programs.

Point 46: The Chairman of the Committee on Patent Law gave an account of the Committee’s discussions.

Point 47: The Chairman of the Council concluded that there were no objections to revised Article 52(1) going into the basic proposal.

Point 48: Discussion turned to the proposed revised text of Article 52(2).

Point 49: The French delegation considered that the matter required clarification. The proposed amendment would be better treated as part of the "second basket"; this would allow the taking into account of the forthcoming Directive and further public debate.

Point 50: The UK, Swedish and Luxembourg delegations concurred with the remarks made by the French delegation.

Point 51: The EU representative indicated that a proposal for a directive would be formulated as soon as possible.

Point 51a: The Swiss delegation considered that the reference to computer programs should be deleted from Article 52(2) in order to clarify the text in view of the evolving jurisprudence. It was not necessary to await a directive from the EU, since the issue at stake was the granting of patents. Consequently, there was no need to delay discussion to the "second basket". The exclusion from patentability of computer programs followed from their lack of sufficient technical character. This aspect was covered by the proposed wording of Article 52(1). The Swiss patent law did not contain a list of exclusions, since this was unnecessary.

Point 52: The Netherlands delegation expressed support for the views expressed by the Swiss delegation to delete computer programs from Article 52(2), adding that placing the provisions of current Article 52(2)(3) into the Implementing Regulations could also be considered as a possible solution.

Point 53: The Hellenic delegation concurred with the views expressed by the Swiss delegation, considering that the reference to computer programs should be deleted. This would correspond to discussions which took place at the IGC in Paris in 1999. There was no need to await legislation from the EU.

Point 54: The Danish delegation observed that public debate was continuing and that the interested circles had some reservations on matters connected with Article 52. It was therefore preferable to discuss this matter as part of the "second basket".

Point 55: The German delegation considered it premature to delete the reference to computer programs from the text of Article 52, considering it preferable to await EU legislation.

Point 56: The Italian delegation considered that the reference to computer programs should be deleted from the text of Article 52(2).

Point 57: The Austrian delegation observed that amendment of Article 52 was one of the elements which launched the revision process and consequently it was a matter which should be dealt with in the forthcoming conference. The Austrian delegation considered that the provisions set out in Article 52(2)(3) could be transferred to the Implementing Regulations, in order that further discussion could take place without awaiting the "second basket".

Point 58: The Portuguese delegation considered that the matter was not yet ready to be placed in the basic proposal.

Point 59: The Finnish delegation concurred with the French delegation that the question should be addressed as part of the "second basket".

Point 60: The Belgian delegation observed that the Committee on Patent Law had expressed a favourable view of deleting the reference to computer programs. Moreover, such a deletion would be in line with the mandate given by the IGC in Paris in 1999. The Belgian delegation was in favour of deleting the reference to computer programs from the text.

Point 61: The Spanish delegation was in favour of dealing with the question of computer programs as part of the "second basket".

Point 62: The Monegasque delegation was in favour of deletion of the reference to computer programs, remarking that patent ability depended in any case on novelty and inventive step. The list of matter excluded from patentability could be included in the Implementing Regulations.

Point 63: The Liechtenstein delegation considered that the reference to computer programs should be deleted.

Point 64: The Irish delegation considered that the reference to computer programs could be deleted during the forthcoming conference but had no objection to the matter being treated as part of the "second basket".

Point 65: The UNICE representative spoke in favour of deleting the reference to computer programs either by deletion or, more pragmatically, by placing the exclusions from patentability in the Implementing Regulations. The requirements of novelty and inventive step would continue to safeguard public interest.

Point 66: The epi representative concurred with the remarks made by the UNICE representative. The proposed text of Article 52(1) was supported strongly by the epi. Moreover, the Implementing Regulations could take account of any Directive issued by the EU.

Point 67: The French delegation explained that, while basically in favour of deleting the reference to computer programs, it was preferable to await the Directive expected from the EU. Moreover, placing this question in the "second basket" of the revision process would adequately take account of the results of the IGC held in Paris. The French delegation considered that placing the provisions currently listed in Article 52(2)(3) into the Implementing Regulations would be a tactical error and would give a negative impression to the public.

Point 68: Following further exchanges the Council proceeded to the following votes:

Point 69: The Council rejected by fifteen votes to four the option foreseen in CA/100/00 of deleting entirely paragraphs (2) and (3) of Article 52 in the basic proposal (present 19; for Italy, Netherlands, Switzerland, Liechtenstein; against Belgium, Cyprus, Denmark, Germany, Ellas, Spain, Finland, France, Ireland, Luxembourg, Monaco, Austria, Portugal, Sweden, United Kingdom).

Point 70: The Council rejected by ten votes to eight with one abstention the option foreseen in CA/100/00 of deleting paragraphs (2) and (3) of Article 52 in the basic proposal and including equivalent provisions in the Implementing Regulations (present 19; for Belgium, Cyprus, Ellas, Italy, Liechtenstein, Netherlands, Austria, Switzerland; against Denmark, Germany, Spain, Finland, France, Ireland, Luxembourg, Monaco, Sweden, United Kingdom; abstention Portugal).

Point 71: No delegation voting in favour, the Council rejected a further option, namely, the omission of any reference to computer programs in paragraph (2)(c) of Article 52 and the inclusion of such a reference in the Implementing Regulations (present 19; for none).

Point 72: The Council approved by ten votes to eight with one abstention the option foreseen in CA/100/00 of deleting in the basic proposal the reference to computer programs in paragraph (2)(c) of Article 52 and keeping the remaining text of Article 52(2) and (3) unchanged (present 19; for Belgium, Cyprus, Ellas, Ireland, Italy, Liechtenstein, Monaco, Netherlands, Austria, Switzerland; against Denmark, Germany, Spain, France, Luxembourg, Portugal, Sweden, United Kingdom; abstention Finland).

Point 73: The effect of the votes was thus to delete the square brackets spanning paragraphs (2) and (3) from the text of the revised wording of Article 52 set out in CA/100/00.

CONFERENCE OF THE CONTRACTING STATES TO REVISE THE 1973 EUROPEAN PATENT CONVENTION

Based on the travaux préparatoires for the EPC 2000 mentioned above the EPC contracting states held a conference on November 20 to 29, 2000 to decide about amendments of the EPC. In Document MR/24/00, points 124-134 the conference proceedings regarding Art. 52 EPC are disclosed. In contrast to the Basic Proposal for the Revision of the EPC (document MR/2/00, page 43) the contracting states decided not to amend Art. 52(2) EPC. Please find below the points mentioned (with bold added by the author of this article):

Point 124: The French, Danish and German delegations introduced the amendments they had proposed in MR/8/00, MR/15/00 and MR/16/00. The object of all these was to leave Article 52(2) as it stood, particularly so as not to anticipate the possible regulation of patent protection for computer programs by EU legislation. This issue should therefore be discussed at a follow-up conference.

Point 125: This proposal was seconded by the Finnish, Monegasque, Swedish, Irish, Italian, Belgian, Spanish, Luxembourg, Cyprus, United Kingdom and Portuguese delegations.

Point 126: The Netherlands delegation said it was essentially in favour of deleting programs for computers from Article 52(2)© as in the Basic Proposal, since the provision had become obsolete as a result of legal practice. In the light of future regulation by EU legislation, the delegation could, however, support an adjournment. It suggested that the Conference should explain the reasons for amending the Basic Proposal in a statement and place on record the fact that the decision not to delete programs for computers from the list of exceptions during this revision of the EPC did not indicate a departure from current practice. The Italian and Luxembourg delegations expressly endorsed this petition.

Point 127: The Austrian delegation considered the deletion of programs for computers from Article 52(2)© to constitute not only an adaptation of the EPC to established European Patent Office practice but also a desirable clarification of the legal position for the benefit of users of the European patent system. In view of the current discussion about possibilities for patenting software-related inventions it could, however, make sense to leave the proposal until a follow-up conference. In the event of a vote the Austrian delegation would therefore abstain.

Point 128: The Swiss delegation said it was still in favour of the Basic Proposal and referred to the Paris intergovernmental conference mandate that the existing legal uncertainty regarding the patentability of inventions involving software be eliminated. Deleting programs for computers from Article 52(2) did not mean a substantive change in the legal position, since the patenting of computer programs was a reality in any case. The Swiss delegation conceded that the ultimate consequences of a deletion could not be fully predicted. It should be borne in mind, however, that keeping the existing provision might be misconstrued as a sign of a more restrictive practice on the part of the EPO and the courts. This would not only mean a sudden change in the prevailing concept of “technical invention” but would also have economic repercussions for the European software industry.

Point 129: The Liechtenstein delegation shared the Swiss delegation’s view and announced that in the event of a vote it would also abstain.

Point 130: The Turkish delegation also said that in the event of a vote it would abstain.

Point 131: The French delegation replied that opinion on this matter had changed since the Paris intergovernmental conference. This was not related to any acquis communautaire, however. No such text had been presented, so it was not correct to say that opinion had changed because of a new acquis.

Point 132: The German delegation pointed out that, also in its view, leaving Article 52(2)© in its present wording must clearly not lead to a change in EPO patenting practice or in the decisions made by the national courts. Like the French delegation, the German delegation emphasised that the law was remaining the same not because previous practice was to be abandoned but to enable further consideration to be given to ways of better formulating patenting practice in a Community context.

Point 133: The representatives of the non-governmental organisations expressed their communal disappointment over the Conference’s intention to continue regarding programs for computers as unpatentable inventions in the EPC (epi, UNICE, FICPI, AIPPI, CNIPA, UNION, FEMIPI and ICC). Owing to the clear requirement for a patentable invention to have a technical character the list of exceptions in Article 52(2) was not necessary for the purpose of examining patentability (FICPI, CNIPA). In the interests of European industry it was not desirable for the proposal to be left until a later conference (epi, UNION, AIPPI, ICC). Some called on the Conference to make a statement that the legality of patenting computer programs with a technical connection was not in doubt if Article 52(2)© were retained (UNICE, FEMIPI, CNIPA). The Basic Proposal was in conformity with the TRIPs Agreement; patent protection and copyright protection could co-exist (AIPPI). Patent protection was not being sought for business methods as such but only for technical methods for implementing them (UNICE, CNIPA).

Point 134: Summing up, the Conference President noted that no formal vote could be held on the Basic Proposal for Article 52(2). Article 52 was adopted by the Conference in the version of the Basic Proposal with the German, Danish and French delegations’ amended proposal on Article 52(2).