Talk:Patentable subject matter/Archive 1

Archive 1

From stub to article

It would be nice to expand the article and survey how patentable (statutory) subject matter is defined, under at least

1. U.S. law
2. European patent law
3. International agreements (especially TRIPS)

Then perhaps to indicate or link to some of the current flashpoints, for example: naturally occurring biological material; genetic material; "traditional knowledge"; programs for computers; etc...

-- Jheald 10:48, 17 October 2005 (UTC)

Added brief description of 35 USC 101 with reference to recent guidelines for examiners published by the USPTO.--Nowa 23:16, 30 October 2005 (UTC)

Added a brief section on Canadian Patentable material with definitions pulled form the CIPO. It would be useful to see if the Canadian Patent Act provides any useful information that could be added. S3307a (talk) 03:51, 17 July 2008 (UTC)

Need to change title of this article

This article only addresses patentable subject matter as it pertains to one industry and is therefore lacking a lot of relevant information. I would suggest narrowing the title so that it is not misleading. — Preceding unsigned comment added by 216.2.60.194 (talk) 14:47, 8 November 2011 (UTC)

as such clause

Article 28 of the polish industrial property law omittes the unclear as such clause, as does art. 6 of the turkish patent law and § 1 of the dansk patent act.

Shall this be added to the EPC paragraph? --Swen (talk) 09:41, 21 July 2010 (UTC)

Not without a reliable source saying that this has an effect in practice. Under UK law, for example, if there's any difference between the EPC and the corresponding provisions in national law, the EPC effectively take precedence (at least for the patentable inventions provsions). Often the courts rarely bother referring to the national law except in passing and just apply the EPC directly. GDallimore (Talk) 11:26, 21 July 2010 (UTC)

"As it is in 
case of many other national patent offices of the member States, the Patent Office of the
Republic of Poland is responsible not only for validation of the patents granted by the EPO
but it also has the power to invalidate such patents. That is why the Patent Office of the
Republic of Poland is interested in creating mechanisms that would encourage both the
discussions and joint decisions on basic principles which patent bodies should follow when
interpreting the EPC provisions. The Patent Office of the Republic of Poland perceives the
possibility of presenting opinions on the issues mentioned by the EPO President to the
Enlarged Board of Appeal as the first step towards a closer cooperation of all interested
parties to work out a proper interpretation of binding patent provisions. Only such a
method of establishing the interpretation of current provisions and only joint analysis of
their drawbacks can constitute the basis for a proposal concerning possible changes in the
binding provisions." 

from the introduction of the G3/08 amicus curiae brief of the polish patent office makes clear, that Poland wants harmonization but in practice applies the patent provisions differently in the sense of their national law. --Swen (talk) 13:58, 21 July 2010 (UTC)

Erm. No it doesn't. GDallimore (Talk) 15:51, 21 July 2010 (UTC)

Maybe this one from Józef Halbersztadt (pages 5-7), patent examiner in the polish patent office is better:

Until 2004 Poland wasn’t a member of the EPO and during the last few decades was outside the economic
mainstream. But we have an old, 85 years old patent office. Like many other smaller European countries, such as
Austria, Czechoslovakia, and Holland, Poland followed German standards and traditions in patenting.
Up until now patent applications on software only come from abroad; their number is not very high and the
Polish Patent Office often does not follow the EPO line. This can happen because:
1. The Polish version of art. 84 EPC “The claims shall define the matter for which protection is sought. They
shall be clear . . . ” presents a clear obstacle to acceptance of means-plusfunctions claims. Alappat claims do
not disclose for what protection is being sought;
2. In the Polish version of art. 52 EPC, which has been included in the law only since 2000, the “as such” part is
not included. Furthermore the regulation of the Prime Minister has a clear “tangibility clause” modeled on the
famous Red Dove / Disposition program landmark decisions, according to which a patent application should
not be recognized as an invention when “it does not concern any tangible creation susceptible of application,
determined by means of technical features relating to its structure or composition, nor any particular technical
way in which it affects a material.”

--Swen (talk) 10:00, 22 July 2010 (UTC)

Now that's getting more interesting. Good find. However, I don't think it's enough to add to this article since, as the quote says, they don't deal with many software cases and this article is about patentable subject matter in general not just the computer program exclusion (peronsally, I think the inclusion of the UK stance is pretty borderline in this article, too, but at least there's a court judgment behind it). I suggest a better option would be to add a Poland section in Software_patents_under_the_European_Patent_Convention#Enforceability_before_national_courts. How does that sound? GDallimore (Talk) 10:28, 22 July 2010 (UTC)

The court judgement is mentioned in Philips Patent Fight and Polish Patent Office: CD Writing Not Classed as Invention. Adam Gierek tells us in a parliamentary question that there are two (EP0789910=US5696505=PL0319407 and WO9718635=EP0861551=PL0326670) and Józef told me that there are good chances that Philips calls the constitutional tribunal. By the way, as I read it, the "tangible clause" of the Prime Minister is not limited to software but to all patent applications in Poland and in PL0319407, the court stated, that CD-writing is not an invention and didn't say it is software. That's why I still find it appropriate to put it under patentable subject matter, but nethertheless Software_patents_under_the_European_Patent_Convention#Enforceability_before_national_courts sounds like a good alternative. --Swen (talk) 06:53, 23 July 2010 (UTC)

You keep on revealing information piecemeal. We started with the completely un-noteworthy fact that Polish law is not quite the same as the EPC. Now you reveal that there has been a polish court judgment which may possibly go further, which indicates a worthwhile addition. But merely mentioning it would be pointless. It either needs a full and carefully sourced discussion or it needs nothing. Suggest you spend more time gathering your sources before adding anything but then just make an edit based on those sources rather than continuing this discussion. GDallimore (Talk) 23:56, 23 July 2010 (UTC)

You realy make it hard to assume good faith. For me, it is noteworthy that 3 countries, that signed the EPC refused to codify Art 52 (3) EPC in their national patent law and I simply asked, if I shall include that. You asked for a real effect and I gathered sources for that effect. How Poland applies Art 52 EPC is an other point, but you asked for that and I search for reliable sources. Maybe, if I search more, I will find more, but my only point was the "as such" clause. You already purged a lot of my earlier edits, that's why I asked first. Now you say it is an un-noteworthy fact that Polish, Danish and Turkish law differs. Ok, someone else shall take care of that as you ended the discussion. --Swen (talk) 22:10, 24 July 2010 (UTC)

Fine. Be a jerk, then. When you initially posted, you had nothing even approaching a reliably sourced noteworthy addition. Now you're getting somewhere having found some sources. If you're fed up with looking for sources to back up your opinions, then you have no business editing Wikipedia at all. GDallimore (Talk) 15:34, 25 July 2010 (UTC)

The list of exclusions in the EPC basically is copied from the Patent Cooperation Treaty adopted a few years earlier. But the PCT is only about obligations for participating patent offices to conduct examinations, not to limit substantive patentability. Still the EPC drafters introduced a major difference by adding the proviso "as such". This proviso makes sense for most exclusions in art. 52(2) EPC. For instance, many inventions are based on discoveries, so discoveries are only excluded as such. The negotiators found that only for software the addition "as such" does not make sense, but they decided to let this proviso apply to all items of art. 52(2) EPC, because an omission might be interpreted a contrario that this exeption should be interpreted broader rather than narrower.

Still no one understands what "as such" really means for software. Von Hellfeld (GRUR 1989) gives no less than six interpretations, and concludes that it is a totally empty concept: "only empty concepts can be filled with content at will". Rbakels (talk) 13:30, 19 May 2012 (UTC)

Thanks for your input. Please make sure when updating an article to add reliable sources to support the statements you are inserting. See Wikipedia:No original research and Wikipedia:Identifying reliable sources. --Edcolins (talk) 08:36, 20 May 2012 (UTC)