Citing the relevant international legislation, namely, of the , of the Agreement and of the WIPO , the ECJ attempted to tread the fine line between the protection of the rights of users versus those the copyright owners. It clarified that computer programs were indeed protectable under EU and international copyright law, so long as they qualified as original literary works of expression, going so far as to include the preparatory steps leading to the development of the source or object codes under the umbrella of copyrightability. As a trade-off however, the Court also stressed that the laws for authorial protection only extend to prevent unauthorized reproduction, and hence, a contract could not be employed to prevent lawful third-party use. Like Adv-Gen. Bot’s opinion, the ECJ also referenced the Computer Programs () and Copyright () Directives of the European Commission, stating that the authorization of the rightsholder is not required when decompilation is necessary to achieve interoperability. And turning to national UK law, the ECJ pointed out that while of the treats copyright as an exclusionary property right in literary, dramatic, musical or artistic works, of the same act deems copying for research, study or testing of the function of the program as acceptable fair dealing uses of a computer program.

Analytically, the ECJ harkened back to questions asked in the preliminary ruling, grouping them into three categories. In the first part, it dealt with whether the functionality, programming language and data files used to exploit the functionality can be considered within the realm of copyrightable expression under of Directive 91/250. As per this aspect, the source and object codes of a program were found to be copyright-protected, since they led to the “reproduction or subsequent creation of the program.” However, the graphic user interface, which constituted the functionality of the program, and therefore only enabled users to utilize the program and not to reproduce was not copyrightable expression under the Directive. The WCJ thus determined that neither the functionality of a computer program, nor its programming language were worthy of copyright protection.

In the second stage of the analysis, the ECJ considered whether of Directive 91/250 allows a party that has legally obtained a copy of a program to use, study and test the program with a view to discovering the underlying principles in order to perform a function that would go beyond the usual purposes contained within the license of the product (e.g. the development of a parallel program using the same programming language). By framing these underlying principles as the ideas at the core of the expression (the copyrighted source program), the ECJ then determined that Article 5(3) of Directive 91/250 does not extend protection over these, and as such, allows the discovery of these through decompilation or reverse engineering. The ECJ clarified that this allowance was naturally based on circumstances where the defendant party did not have access to the plaintiff’s source code, and hence, could only discover the underlying principles through original research, study and testing.

In the final category, the ECJ considered whether of Directive 2001/29/EC can be interpreted as meaning that the reproduction of certain elements used to describe one program in the manual, or the contents of a second program can be deemed as infringement. While agreeing that the plaintiff’s user manual was indeed a protected literary work, the ECJ also said that the individualized components of a computing language (keywords, syntax, commas, commands, defaults, figures etc.) could only be considered as creating an infringable work if a reproduction of these was also a copy of the “intellectual creation of the author of the user manual.” The question however, as left open for national courts to consider.

The ECJ’s attempts to balance the competing rights of users and the copyright owners of computer programs clearly come to the fore in this ruling. While this case’s most obvious implications mean that the ECJ heeded Adv.-Gen Bot’s warning and prevented the unprecedented monopoly of functionality, it remains to be seen whether both copyright owners and users can rest easy, especially given the vast sums of capital that are at stake in the often-precarious computer software industry.

Mekhala Chaubal is a JD candidate at Osgoode Hall Law School.

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In doing so, Adv.-Gen. Bot has reaffirmed Justice Arnold’s preliminary ruling, with respect to the prevention of a monopoly on source and object codes of computer programs by the copyright owner. The opinion refers to the interplay between the two EU directives, their transposition into UK national law through to the , and the general adherence of both of the above to of the . As per the facts of the case, the plaintiffs, SAS Institute developed the ‘SAS System,’ a software program that ran on its own programming language, making it impossible for existing clients to run their application programs in any other form without “considerable investment.” To continue using the SAS components required clients to obtain licenses from the SAS Institute. The respondent, WPL Programming had developed software that allowed execution in the SAS programming language, and, according to , also allowed “access and process data stored in SAS's proprietary format, eliminating the need to buy licenses from SAS if users want to develop new functions to analyze their data.”

Even as WPL Programming admitted its intention to follow the functionality of the plaintiff’s program as closely as possible, it denied SAS Institute’s claim of infringement of the overall computer program itself, since it had no access to the latter’s code when designing its own code. Further, previous rulings in the UK courts had also shown that studying a program’s code to determine how it works (decompilation) was not deemed to be an infringement of the owner’s copyright.

While Adv.-Gen. Bot was clear that the protection of computer programs was defined as extending to expression, and not “ideas, procedures, methods of operation or mathematical concepts,” he also mentioned that the legal definition of ‘expression’ with respect to functionality was left open to interpretation, in order to accommodate future technologies within the framework of Directive 91/250. The Advocate-General then deemed that functionalities were ‘dictated by a specific and limited purpose,’ finding them closer to an ideas rather than expression, and hence, not copyrightable. By equating a computer program to a literary work, the opinion also stated that Article 1(3) of the Directive cited originality, and the time, effort and level of skill and judgment invested in the expression as the only criteria to determine copyrightability.

When considering whether the programming language was protectable under Directive 91/250, Adv.-Gen. Bot again drew a parallel between computer programs and literary works, stating that the language the former was written in merely permitted the actual expression, and not being part of the latter, was not copyrightable. With respect to interfaces however, the Advocate-General opined that 91/250 did not preclude these from copyrightability, provided that they formed a substantial part of the expression of the computer program itself. Also, Article 6(1) of the same directive was deemed to be indicative of decompilation of the program by a licensee as being permissible, if it was for the purpose of interoperability. Additional proposed limits included the licensee having to demonstrate “the form of the code for the purposes of interoperability with the elements of his own program,” and ensuring that the original code was not merely recopied.  Finally, Adv.-Gen. Bot referred to Article 2(a) of Directive 2001/29/EC to recommend that certain elements of a computer program could constitute infringement if reproduced in manuals, as long as they were found to be “expressions of the author’s own intellectual creation.”

Though non-binding, the opinion is an influential intermediary move in determining the nature and scope of the copyrightability of computer programs. The ECJ is due to consider the case in 2012, and in the meantime, scholars have already deemed Adv.-Gen. Bot's opinion as a step in the right direction, emphasizing that to ensure fair monopolization of software programs.

Mekhala Chaubal is a JD candidate at Osgoode Hall Law School.

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On May 12, 2010 the Enlarged Board of Appeal of the European Patent Office (EPO) responded to several questions posed by the President of the EPO, Ms , regarding the patentability of computer programs in Europe.�� The resounding answer to these questions, provided by the Enlarged Board of Appeal, was that they are inadmissible and that the status quo should prevail.��

In constructing , the Enlarged Board of Appeal cited that the purpose of the European Patent Convention (EPC) is to establish uniformity of law within the EU patent system.�� The only way the Enlarged Board of Appeal can partake in the development of law is in instances of conflict between existing precedents, whereby the board may break with existing practise and point the development of law in a new direction.�� The President’s questions posed to the Enlarged Board of Appeal did not address conflicting decisions in the patent system, and were thus inadmissible.

While the Enlarged Board of Appeal did not deviate from current case precedents in Europe, it did clarify and provide guidance regarding the interpretation of leading cases in the European patent system.��  Under the EPC, computer programs are listed among the categories that are not patentable subject matter.�� However, while patents explicitly claimed as computer programs are not patentable, programs that are part of a computer, network or other programmable apparatus’s scheme are not excluded and may be patentable as a .��

The Enlarged Board of Appeal clarified that according to the (Microsoft) decision a program on a computer-readable medium is not excluded from patentability.�� So long as either the computer-readable medium or the program it contains has a technical effect, it will not be excluded from patentability.�� The final question, before granting a patent then, is to consider whether the computer program or computer-readable storage medium which contains it, has an inventive step.��   

While a computer program on a computer-readable medium is not excluded from patentability, the Enlarged Board of Appeal did state that simple patent claims for a program on a computer-readable storage medium or method of operating a computer will still fail to be patentable for lack of an inventive step.   To be patented, the programmer must construct a program/procedure which a machine cannot only carry out, but must make a non-obvious technical contribution, or solve a technical problem.

This decision by the Enlarged Board of Appeal likely disappointed many who hoped for a change to exclude the patentability of all computer programs in Europe.�� Many consider software patents to be broad and trivial by nature, and that these patents harm the economy by stifling innovation and growth.�� Because the work of a programmer is already protected by copyright, detractors of the software patent system argue that patents in this area are often used to restrict the interests of software producers in favour of patent producers.�� Alternatively, proponents of software patentability cite that these patents will promote economic growth by encouraging investment in research and development, and increase the valuation of small companies who can protect their market-share using patents to challenge larger companies and thus increase competition.��

Europe’s software patent policy currently has settled on a restrained approach to granting software patents, where computer programs must have a technical characteristic as part of a larger computer or network scheme.��  While proponents and detractors of software patents had hoped the Enlarged Board of Appeal would reform Europe’s patent system, clinging to the status quo has done little to satisfy European software developers’ appetite for change.��  All eyes are now on the US Supreme Court and their upcoming decision in to provide guidance for the development of software patent law in North America, Europe and around the world.

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