The Unitary Patent Court (UPC) Agreement, entered into by all EU states bar Spain and Poland, sets out the rights that will be conferred by a Unitary Patent and the exceptions to infringement, such as acts done privately and for non-commercial purposes, experimental acts, acts for breeding purposes and the like.
The Agreement introduces certain exclusions not so far recognized by UK law, including use by a farmer of protected livestock (provided the breeding stock were acquired with the consent of the patent proprietor). One further exclusion is causing concern and debate among patent owners in the IT and software field, and this is the exclusion - UPC Agreement, Art. 27(k) - for the “acts and use of obtained information as allowed under Articles 5 and 6 of Council Directive 2009/24/EC on the Legal protection of computer programs.”
Council Directive 2009/24/EC on the Legal protection of computer programs is based on provisions dating back to 1991. At that time there was widespread concern that they might undermine copyright in software, but they have generally proved innocuous since. The concern now is that an exclusion under copyright will be extended to an exclusion also under patent rights. This concern is heightened because, given the nature of many inventions in these fields, there may be computer programs interacting with each other, together implementing a patented invention and it is often important to be able to bring a contributory infringement case against the equipment and software on just one side of the interface.
The UKIPO is consulting users on whether and to what extent UK patent law should be amended to implement this exclusion. Contrary to their stated opposition to “gold-plating” the UPC Agreement, they propose to make the same amendment not only for Unitary Patents but also for UK and EP(UK), even though they are not obliged to do so. Here we briefly explore whether the exclusion is something to cause concern.
Appalling Legislative Drafting
The Agreement is very poorly worded indeed, which is a cause of concern in its own right. Article 27(k) refers to “acts . . . allowed” under Articles 5 and 6 of the Directive, whereas those articles in fact set out exceptions to acts restricted under copyright.
Setting that aside, Article 5 of the Directive says that acts normally within the rights of the copyright holder include reproduction of a computer program necessitated by loading and running the program as well as translating, adapting and altering a program and reproduction of the results thereof and that these acts shall not require authorisation by the “rightholder” where they are necessary for the use of the computer program by the “lawful acquirer” in accordance with its intended purpose.
Incorporation of this exception into patent law begs the question whether the “rightholder” now extends to a patent owner claiming rights over the program where the “lawful acquirer” has acquired a program under a copyright licence but without any rights from the patent owner. We should assume it does. Otherwise, it would appear pointless referencing a copyright exclusion in patent law.
Also “permitted” by Article 5 are observing, studying and testing the functioning of the program, but these exceptions are of no concern, as they are already covered by the experimental use exception.
Distribution to the public of copies of the original computer program remains an undiluted right under copyright and will remain so under patent rights.
Turning to Article 6, the acts “permitted” here relate to achieving interoperability of a computer program that is created independently of the program that benefits from copyright protection. The copyright owner cannot enforce copyright to prevent the obtaining of information necessary to achieve interoperability, subject to certain provisos, including that: (i) the acts are done by a licensee or person entitled to use a copy of the program; and (ii) the necessary information is not previously readily available.
At the time of the Directive, many developers contemplated publishing interoperability information so as not to dilute their copyright in a computer program, but it soon became apparent that, as a barrier to market entry, withholding interoperability information was more valuable than any slight erosion of copyright protection. If software developers had an interest in achieving interoperability, they would in any case publish interoperability information and had no interest in exerting proprietary control. The issue was a storm in a teacup.
The question now is whether inclusion of this Directive as a new exception under patent law means that a patent owner cannot enforce patent rights to prevent the obtaining of information necessary to achieve interoperability of a computer program, subject to the same provisos that (i) they are done by a licensee or person entitled to use a copy of the program; and (ii) the necessary information is not readily available.
At first sight, one might ask whether it matters. In contrast to copyright, the “deal” underlying patent rights is that the principles of the invention are disclosed by publication in the patent application, in return for which a monopoly right is granted. Patents are not about restricting the obtaining of information. They are about commercially exploiting the invention. The experimental use exception already allows acts done for experimental purposes relating to the subject matter of the invention. The UKIPO consultation recognizes that this exception covers most of the acts now proposed to be permitted under the Directive.
The UKIPO consultation says the Directive “goes further and provides for exceptions specifically related to de-compilation, interoperability and reproduction”. This is correct. Reproduction of the results of translation, adaptation and alteration of a computer program, which are normally restricted acts under copyright are permitted by a licensee or person entitled to use a copy of the program, unless the licence explicitly says otherwise, where they are necessary for the use of the computer program by the lawful acquirer in accordance with its intended purpose. This reproduction can extend to distribution, provided it is not distribution of copies of the original program.
A scenario might be that Party A has copyright in computer programs A1 and A2. Party B has a copyright licence from Party A and relies on the Directive to prepare an alternative program B2 that interoperates with program A1. Provided that program B2 is not substantially similar to program A2, Party A cannot rely on copyright to stop party B from distributing program B2 if party B can make the case that such distribution is necessary for the use of program A1 in accordance with its intended purpose.
Party A has a patent and claims that use of B2 (or B2 in combination with A1) infringes his patent rights. Is party B’s defence to copyright infringement also valid against patent infringement?
No mere hypothetical
This is not a mere hypothetical scenario. In the case of Qualcomm v Nokia, for example, contributory infringement was found by sale of Nokia phones for use in a GSM/GPRS network. Infringement was found even though the GSM cellular network as it then existed did not operate as described by the functional requirements of the patent claim. There was much argument over whether there would be infringement only after Nokia modified its software to implement certain forthcoming features. There was no suggestion that Qualcomm had licensed the network software under copyright or patents, but it would be intolerable in such a case if Nokia could claim exemption from patent infringement on the grounds that the software in their phones achieved interoperability with some licensed network software and was a necessary upgrade for the continued use of the phones on the network. This would be tantamount to saying that by licensing the network software, patent rights had been exhausted, even to the point of exhausting rights in phone software that includes new and patented features not yet implemented in the network software, but somehow necessary for continued use of existing software.
Of course, the Qualcomm v. Nokia situation is in the context of a standard, so the information necessary to achieve interoperability is readily available (which is why, of course, Nokia were able to include code for forthcoming features) and in such circumstances, the conditions for forgoing the authorization of the rightholder to perform alteration of the computer program are not met. So even if a party such as Nokia benefited from a software licence (e.g. from Qualcomm in this now hypothetical scenario), that party could not claim carte blanche to modify its phone software in the face of the rights of the rightholder. But the principal holds equally true for proprietary unpublished software. Just because a party has licensed some software, the licensee may be free to ascertain how to interoperate with it and create an independent work, and may be able to claim a defence to copyright infringement insofar as reproduction of the original work (perhaps going beyond the strict terms of the copyright licence) was necessary to achieve that interoperability, but this does not amount to carte blanche to implement any and all features in the derivative work that the licensor may have patented on the mere grounds that it is necessary to continue to enjoy the benefit of the original software.
Herein lies the problem with incorporating the Directive on the Legal Protection of Computer Programs into patent law. It is worded for copyright law with the underlying assumption that an independently created program is a separate work of authorship and that, provided it is not “substantially similar in its expression” to the original work, its author should be free to distribute the independently created program. No account is taken that the independently created program alone, or when interoperating with the licensed program, may amount to infringement of a patent.
If, as is expected, this exclusion is incorporated into UK law verbatim, software licensors will wish to look carefully at copyright licences to ensure they explicitly withhold to the copyright owner the exceptions under Art 5.1 of the Directive (in particular the right to reproduce translated, adapted or altered versions of the software).
Licensees who envisage relying on the Directive to escape patent infringement will have to be prepared to make a convincing case that the feature that is newly implemented that gives rise to the claim of patent infringement in the derivative work is indeed necessary for the continued use of the licensed computer program in accordance with its original intended purpose.
Will National Patents remain undiluted?
The UK and other EU countries are not bound to implement this defence for their national patents. It will be interesting to see if the UK and other states resist the urge to “gold plate” the legislation and instead leave national patent rights undiluted. If so (and depending on how the dust settles over the myriad of uncertainties discussed here) rights owners may indeed see this as another reason to prefer the national patent route.