The National Board of Patents and Registration of Finland Changes its Praxis

The European Union aims at enacting a Directive that harmonises the rules of the Member States concerning the processing and adequacy of patent applications of computer created innovations. As the EC Directive is yet to be finalised and approved, the National Board of Patents and Registration of Finland (the "NBPR") has resolved to change its current praxis by starting to apply the guidelines of the European Patent Office (EPO).

With respect to copyright protection of computer software, the Copyright Act (404/1961) gives computer programs the same protection as for literary works under the Copyright Act. Pursuant to Chapter 1 Section 2 of the Patents Act (550/1967) in Finland, programs for computers shall not be regarded as patentable inventions as such. A computer program or a part of it can, however, be patented as a part of a manufacturing method or device, which performs the program.

All national patent applications filed with the NBPR are subject to thorough examination of inventive step and novelty. Characteristic for patent law in Finland is that there have been very few precedents from the Supreme Court regarding patent law issues during the later 1980’s and the 1990’s. Since the NBPR has, during the recent years, received a considerable number of patent applications relating to computer programs, it no longer wishes to wait for the final adoption of the Directive.

The practices for applications for computer-implemented inventions of the NBPR have varied considerably during the recent years. However, EPO has taken a step towards harmonization of the field and commenced approving software patent claims subsequent to certain decisions of its boards of appeal. The European Union aims at clarifying and harmonizing regulations and praxis related to computer-implemented inventions in the Member States.

The proposed EU Directive is quite similar to the practice adopted by the EPO, but it differs from it with regard to the software patent claims already adopted by the EPO and by certain Member States. (EPO Guidelines, October 2001) In Finland, the software patent requirements of EPO were not adopted as such. As the Commission’s proposal for the Directive corresponds to the practice adopted by the NBPR, it was not considered necessary by the NBPR to create practices that prospectively would only be applied for a short period of time. Instead it was decided to wait for the final directive. However, the NBPR waited for some progress in relation to the proposal for almost for a year and it seems that Council and Parliament of the EU have differing views on the Commission’s proposal and it seems necessary to adopt a conciliation procedure between the Council and the Parliament, which is likely to take quite some time. Thus, in February 2003, the NBPR resolved to changes its practice concerning the computer-implemented inventions by commencing to adhere to the practice previously adopted by the EPO until the final EC directive on computer-implemented inventions is finally adopted.

The NBPR waited for the Directive in order to be able to avoid changes in its current policy that possibly will be required by the new rules. However, it has already been possible to validate applications including software patent claims in Finland by addressing the applications directly to EPO. In this respect, if the NBPR would not have changed its practices, the applicants would have been put in an unequal position. The NBPR sees no statutory or research related restraints or inconveniences for the NBPR to change its practice to correspond the interpretation of EPO.

The office will change its practice related to the software inventions in a way that the office will adhere to the practice adopted by the EPO until the final EC directive on computer-implemented inventions is issued. This means that e.g. the software patent claims will be accepted in accordance with the EPO Guidelines. The consequences of the new policy remains to be seen as there is currently no praxis available on the new process, which will be applied at least until the Directive has been adopted.

For further information on this topic please contact Rainer Hilli or Liisa Laurila at Roschier Holmberg, Attorneys Ltd by telephone (+358 20 506 6000) or by fax (+358 20 506 6100) or by email (rainer.hilli@roschier.com or liisa.laurila@roschier.com).