Copyright protection may be characterized as relatively wide, yet thin protection form governing only the literary expression of computer program, but leaving all inventive ideas beyond protection. Patent protection for computer programs had been subject to discussion already for a long time.212 The European Commission issued finally in 2002
207 T 1173/97 (IBM) at 30-31. Smith at 64-65. Stobbs§10.4[A] at 10-13 – 10-14. Haarmann at 176. Mylly, U-M 2011 at 452-453.
208 T 0931/95 (Pension Benefit Systems). T 0258/03 (Hitachi). T 424/03 (Microsoft). Haarmann at 176- 177. Mylly, U-M 2011 at 455. Oesch, Pihlajamaa, et. al. at 91-93. Press at 375-380.
209 1 Raymond Nimmer §5:15 at 5-24 – 5-25. See also Mylly 2009 280-283.
210 Guidelines for Examination in the European Patent Office, November 2016 Edition. Stobbs §10.5 at 10-16 – 10-18.
211 G 0003/08 (Enlarged Board). UK scholars have noted that development of EPO praxis resembles more civil law than common law methods, as the Boards are bound by the EPC, but not their precedent, despite that they try to be consistent with earlier doctrines. See Press at 377, FN 14.
a draft proposal for a directive on patentability of computer-implemented inventions.213 The directive aimed at harmonizing the various national practices regarding patenting of computer programs, which had developed under the EPO practice throughout the years. The concern was that rules regarding patentability of computer-implemented inventions were ambiguous and lacked legal certainty. The European Parliament faced heavy lobbying on the patent directive, both by representatives of big software companies and the FOSS community alike. However, the software patent directive never entered into force: Reflecting the lobbying of FOSS advocates, the European Parliament provided a revised version of the bill significantly limiting patent protection for computer programs by expressly excluding pure computer program implemented business methods from the scope of the patent eligible subject matter. Some corporations with extensive software patent portfolios may have been concerned of potential dilution of their software patents due to the amended directive. Consensus was never reached on the contents of the directive.214 Therefore, patent protection available for computer programs in Europe is still based solely on national laws revised through the years to comply with the EPC interpreted in light of the EPO practice.215
Despite rejection of the software patent directive, there will soon be a change in the fragmented status of patent protection due to introduction of the new Unitary Patent system. Because both the PCT and the EPC provide merely a mechanism for obtaining a bunch of national patents by filing one patent application,216 the longstanding objective has been to create a model for reaching a true unitary patent within Europe. Finally, after many decades of preparation, the new EU Regulation on creation of unitary patent protection (the Unitary Patent Regulation) was adopted in 2013, although it has not yet taken effect. EPO will carry out the activities under the Regulation, and an application filed with the EPO under the Regulation will result in a European patent with unitary
213 COM (2002) 92: Commission Proposal for a directive on the patentability of computer-implemented inventions.
214 Kauppi at 7, 9, 14 and 16. Hoyng, Eijsvogels, et. al. at 5. Evans & Layne-Farrar at 14. Haarmann at 177. Harenko, Niiranen, et. al. at 221. Oesch, Pihlajamaa, et. al. at 89. Ghidini & Arezzo at 346-348. Levin at 260. Bernitz, Karnell, et. al. at 173. Kur & Dreier at 142 – 144. For institutional structure of the EU and powers of commission and parliament, see Týc 2.
215 Mylly 2009 at 278. Mylly, U-M 2011 at 450. Press at 369-370. 216 Article 11 of the PCT and Article 2 of the EPC.
effect within the participating EU member states.217 The Regulation will become applicable latest when the UPC Agreement enters into force.218 The Regulation will be directly binding on the participating member states. The UPC will have an exclusive competence in matters governing infringement and invalidity of European patents and European patents with unitary effect.219 UPC will apply the EU law and respect its primacy. Decisions of CJEU are binding on the UPC.220
As to patenting of computer programs in Finland, the Patent Act of Finland provides that anyone who has made an invention susceptible of industrial application is entitled to an exclusive right to exploit the invention commercially.221 However, software programs as such are not considered inventions within the meaning of §1of the Finnish Patent Act.222 Computer program alone may not be patentable, but as part as of, for example, a device also program may be within the patent eligible subject matter if the other preconditions for patentability are met.223 The restriction in the Patent Act of
Finland regarding patentability of computer programs is based on the EPC under which software programs are not eligible for patent protection as such.224 For reference, also
the patent laws of France, Germany, Sweden and the United Kingdom (UK) exclude patentability of computer programs as such.225 Finland became a member of the EPC in 1996 after accession to the EU, but the list of exclusions was taken to the Patent Act
already earlier.226 National Board of Patents and Registrations of Finland (NBPR)
follows the legal praxis of EPO in granting patents for computer programs. In light of
217 Articles 3 and 5 of the Unitary Patent Regulation.
218 Article 19 of the Unitary Patent Regulation. Kur & Dreir at 153. 219 Bernitz, Karnell, et. al. at 21 and 164-166.
220 Articles 20 and 21 of the Unified Patent Court. Kur & Dreir at 155. 221 §1.1 of the Patent Act of Finland.
222 §1.2 of the Patent Act of Finland. 223 Oesch, Pihlajamaa, et. al. at 62-63 and 88. 224 Harenko, Niiranen, et. al. at 221.
225 Article R-611-10 of the Intellectual Property Code of France. Section 1 of the German Patent Act. Section 1 of the Patent Act of Sweden. Section 1(2) of the Patent Act of the United Kingdom. 5 Mills, Reiley, et. al. §27:2 at 27-2, §28:2 at 28:2 and §33:2 at 33-2.
226 Decree on enactment of the Convention on the Grant of European Patent (European Patent Convention) 117/1996.
the established EPO praxis, it may be concluded that today computer programs may be patented in Europe, including Finland.227
Namely, notwithstanding the wording of the EPC, the function, method or process resulting from running software program on a computer may be patented. Further, programs that manage physical processes or operating systems have been granted
patents.228Under the EPO practice, in order for a computer program to be patentable (1)
it must provide a solution to a problem of technical nature; (2) the means for solving the problem are of technical nature (technical features); (3) solving the problem brings about technical effects (technical contribution); (4) the invention embodies a technical
character (by solving a problem by implied technical features); or (5) the computer
program claimed as such has a technical effect, which goes beyond the normal physical interactions between a computer program and a computer.229 EPO has granted patents
specifically for computer related inventions that require both software and hardware.230
However, there is still no clear standard for patentability of computer programs. Therefore, the line between an un-patentable computer program (as such) and a patentable computer implemented innovation (CII) has remained, and will continue to remain somewhat vague, considering also that there is no harmonized EU law on
patentability of computer program related innovations.231
The best guidance on the current status of patentability of computer programs in Europe may be reflected by the recently updated EPO Guidelines issued by the EPO in
November 2016.232 Under Part F, Section 3.6 (Programs for Computers) of the EPO
Guidelines, computer implemented invention (CII) means claims, which involve computers, computer networks or other programmable apparatus whereby one or more features of the claimed invention are realized by means of a program or programs. CII
227 Haarmann at 177. Oesch, Pihlajamaa, et. al. at 89. See also Bernitz, Karnell, et. al. at 172-173. 228 Bernitz, Karnell, et. al. at 172-173.
229 Hoyng, Eijsvogels & Hartog at 5. Haarmann at 177. Oesch, Pihlajamaa, et. al. at 91-92. Mylly, U-M 2011 at 453. Ghidini & Arezzo at 351-352. Bernitz, Karnell, et. al. at 172-173.
230 Bernitz, Karnell, et. al. at 172-173. 231 Kur & Dreir at 139-144.
inventions may take the forms of method claims, device claims, computer program product claims and/or computer readable (storage) medium/data carrier claims. In practice, one software patent includes often several types of claims in order to ensure maximum protection for the CII invention in different contexts. The patentability considerations for CII claims are the same as for other subject matter. While "programs for computers" are included among the items listed in Article 52(2) of the EPC not to be regarded as patentable inventions, if the claimed subject matter has a technical
character, it is not excluded from patentability by Article 52(2) and (3) of the EPC
under the EPO Guidelines. According to the EPO Guidelines, features of the computer
program itself (T 1173/97) and the presence of a device defined in the claim (T 424/03 and T 258/03)may provide required technical character for the claim.233
Further, the EPO Guidelines provide that a "computer program claimed by itself is not
excluded from patentability if it is capable of bringing about, when running on or
loaded into a computer, a further technical effect going beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run (T 1173/97 and G 3/08). The normal physical effects of the execution of a program,
e.g. electrical currents, are not in themselves sufficient to lend a computer program
technical character, and a further technical effect is needed. The further technical effect
may be known in the prior art."EPO Guidelines also state that "a further technical effect
providing the technical character to a computer program may be found, for example, in the control of an industrial process, or in the internal functioning of the computer or its
interfaces under the influence of the program, affecting e.g. on the efficiency or security
of a process, the management of computer resources required or the rate of data
transfer in a communication link." If the claimed invention does not pass the test for technicality, the computer program is not eligible for patent protection. Only if the
subject matter has further technical effect, the examiner should consider novelty and
inventive step of the invention under the EPO Guidelines.234
233 EPO Guidelines, Part F, Section 3.9 (Programs for Computers). 234 EPO Guidelines, Part F, Section 3.9 (Programs for Computers).
Finnish patent may be applied for several ways: (1) either filing a national patent application with the NBPR; (2) applying for a European patent with the EPO and designating Finland within the countries where protection is sought; (3) applying for a unitary patent once the Unitary Patent Regulation has become applicable; or (4) submitting an international patent application under the PCT system.235 Anyone who has been granted a patent in Finland, has the exclusive right to exploit the patent commercially, and accordingly, may exclude others from using, making, selling, offering for sale or importing a product or a process embodying the patented invention.236 However, patent does not mean that the patent holder would have the right to use the patented invention him or herself, as the right to use may be dependent on other laws, regulations as well as patents owned by third parties.237 The exclusive rights based on patent are limited also in terms of territory and time: national Finnish patent is in force in Finland only, and may be renewed up to a maximum term of 20 years from the date of filing the patent.238 When it comes to employee inventions pertaining to computer technology, those inventions, like any other employee inventions, are subject to the Employee Invention Act of Finland and must be acquired in accordance with the Act.239
Exclusive rights in patents are subject to several limitations. The purpose of the limitations on patent holder's exclusive rights is to prevent too strong patent protection, which would rather hinder than advance the technological innovation, and introduce restrictions on the freedom of operation.240 For example, other than commercial use of patented invention is not within the exclusive rights of a patent holder. Accordingly,
private use as well as experimental use of the invention are beyond patent protection.241
Defenses of experimental use and/or (prior) private use are also available, for example,
235 Haarmann at 204. Oesch, Pihlajamaa, et. al. at 129.
236 §3 of the Patent Act of Finland. Haarmann at 214. Norrgård at 41. Oesch, Pihlajamaa, et. al. at 222. 237 Haarmann at 213. Oesch, Pihlajamaa, et. al. at 111.
238 §40 of the Patent Act of Finland.
239 Employee Invention Act of Finland (1967/656). Oesch, Pihlajamaa, et. al. at 356-357. Haarmann at 244-246.
240 Oesch, Pihlajamaa, et. al. at 116.
in France, Germany, Sweden and the UK.242 Thus, under several European jurisdictions, patented invention may be made and used freely, say, within a DIY (do it yourself) project. Also research, teaching and other similar activities may be carried out without a separate consent of the patent holder provided, however, that the invention is the subject of the research and not used as a research tool.243 Further, under certain circumstances, rights in the patented product sold by the patent holder or with his consent are subject to exhaustion.244 The doctrine of patent exhaustion as existing in Europe will be discussed in more detail in Section 4.1.1 (Patent Exhaustion in Europe).
The remedies for patent infringement include injunction, damages as well as criminal sanctions based on industrial property offence. Court may prohibit the alleged infringer from continuing the infringing act.Further, the infringer is, irrespective of whether its conduct was intentional or negligent, liable to the patent holder for reasonable compensation for exploiting the invention as well as damages for injury caused by the infringement. If the infringer's acts were only slightly negligent, the court may adjust the compensation accordingly. If the infringer acted neither intentionally nor negligently, the infringer is liable for compensation only to the extent reasonable. Also the Patent Act of Finland includes a time bar for claiming compensation: Compensation for patent infringement may be claimed for a maximum period of five years prior to filing the suit. Right to compensation for damages suffered prior to the said time bar will lapse.245 In addition to injunction and damages, the patent holder may also request that the court orders the infringing goods to be altered or destroyed, or surrendered against payment of their value to the patent holder. The goods may also be seized in case of industrial offence.246 Patent infringement may also result in criminal sanctions. Willful patent infringement may bring about liability for fines based on violation of
242 Articles L.613-7 and L.613-5(a) of the Intellectual Property Code of France. See also Guillot at 28-30. §11 and 12 of the German Patent Act re research exception and (private) prior use. See also Büchling at 21-24. §§3 and 4 of the Patent Act of Sweden. See also Gozzo & Hägg at 15-16. §§60(5)(b) and 64(1) of the Patent Act of UK. See also Willoughby at 28 and 30-31. 5 Mills, Reiley, et. al. §27:5 at 27-11, §33:8 at 33-15.
243 Oesch, Pihlajamaa, et. al. at 122. Haarmann at 220 and 222. 244 §3.3 of the Patent Act of Finland.
245 §57 of the Patent Act of Finland. 246 §59 of the Patent Act of Finland.
patent rights. However, the patent holder must request that public prosecutor brings the
action before a court.247 Patent infringement may also be punished as industrial
property right offence under the Penal Code.248 The forum for civil patent proceedings is the Market Court as the first instance.249 As noted earlier, case law on patents is scarce in Finland, and the Supreme Court of Finland has not adjudicated any case regarding software patents.250