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Software Patents - Can You Patent Software?

Yes, but it depends....

I am often asked the questions "Is it possible to patent software", or "Can a computer program be patented?". Can software be patented? Strictly speaking - no. However, strictly speaking, a blue print can't be patented either, but that doesn't stop you from obtaining a patent for the device described in the blue print. Software, by it very nature, is a highly complex method. Being essentially a method, it is possible to patent "software" provided the method underlying the software is novel and inventive. For this reason, the United States patent office grants "software patents" all the time. I myself have obtained several of them for clients. However, software related inventions have unique challenges, not least of which is the difficulty in screening prior art. Another difficulty with "software inventions" is that they may not be patentable in Europe. Indeed, article 52(2) of the EPC (the charter governing the European Patent Office) appears to preclude the possibility of patenting software. Never the less, it appears that even in the EPO it is possible to patent "software related inventions", provided certain factors are met. In researching this topic I came across an excellent article on the subject of Software related patents in Europe which I have reproduced below. The article is from the european patent office web site which is an excellent resource and source of information on patents.

 

Computer-Implemented Inventions (CII) are a hot topic in the patent world. While some countries grant patents for all types of software, the patent practice in Europe is a different matter. Here, developers need to show that their invention actually makes a contribution in a technical field.

Computers are part of almost every area of modern life. And they are getting more advanced every day, with increasingly small gadgets performing ever more complicated tasks. Consequently, the number of new inventions seeking patent status in the field has been rising steadily.

In fact, patent applications for computer-based inventions have the highest growth rate among all patent categories presented to the European Patent Office (EPO) over the past few years.

A thorough examination process awaits all new applications in this field. The main aim is to distinguish true technological innovations - which contribute to the overall level of progress - from straightforward variations on existing methods. In technical terms, this means ensuring the novelty and inventiveness of computer-implemented inventions (CII).

What are CIIs?

A CII is usually defined as an invention that works by using a computer, a computer network or other programmable apparatus. To qualify, the invention also needs to have one or more features which are realised wholly or partly by means of a computer program.

To be patentable, CIIs must fulfil the same basic patentability requirements as inventions in all other fields. These are set out in the European Patent Convention (EPC).

Accordingly, CIIs can be patented if:

  • They have technical character and solve a technical problem.
  • They are new.
  • They involve an inventive technical contribution to the prior art.

With this definition as a basis, the patenting process for CIIs at the EPO is very restrictive as it puts emphasis on new technical solutions. The most striking consequence of this definition is that computer programs, which do not solve a technical problem, are not patentable in Europe.

Why are such programs not patentable in Europe?

The EPO does not grant patents for computer programs or computer-implemented business methods that make no technical contribution. Programs for computers as such are excluded from patentability by virtue of Art. 52(2)(c) and (3) EPC. According to this patent law, a program for a computer is not patentable if it does not have the potential to cause a "further technical effect" which must go beyond the inherent technical interactions between hardware and software.

On the other hand, a CII (even in the form of a computer program) that can provide this further technical effect can be patentable, subject to the other patentability requirements, such as novelty and inventive step. In this case, it would be recognised as providing a technical solution to a technical problem.

What does this mean in practice?

Let us demonstrate the effects of CII legislation with some real-life cases. The truth of the matter is this: Inventions that use computer programs to provide a business process - not a technical process - are not patentable.

A patent application for an Internet auction system was not granted because the system used conventional computer technology and computer networks - which meant it made no inventive technical contribution to the level of existing technology. Such a system may provide business advancement to its users, but that is not the type of advancement required by the EPO.

On the flip side, the problem of improving signal strengths between mobile phones is a technical problem, even if it is solved by modifications to the phone software rather than its hardware. Such an invention would obtain a patent, provided that the solution is also novel and inventive.

In this respect, the granting practice of the EPO differs significantly from that of the United States Patent and Trademark Office (USPTO), where patent protection for software is granted, even if it does not solve a technical problem.

Debate and legislation

For several years now, opponents of EPO practice regarding CIIs have voiced their criticism in public. Some argue that patent protection should not be available for any computer programs at all, and question the patentability of CIIs altogether.

On the contrary, others complain that patent protection for software is not available at all in Europe - which is not true. Computer programs can gain patent status if they make a proven technical contribution. The only noteworthy exception is the UK, where patent applications for computer programs are not eligible.

Nevertheless, the ongoing discussion has set in motion a number of official conferences debating the patent status of computer programs. In June 1999, the member states of the EPO gathered in Paris at an intergovernmental conference to discuss the reform of the patent system in Europe. One of the key aims of the conference was "to eliminate any ambiguity regarding the patentability of inventions involving software."

To gain clarity on the issue, the conference decided on a revision of Article 52(2) of the EPC, which excludes computer programs (as such) from patentability. Some members requested the removal of computer programs from the list of non-patentable inventions in Article 52(2).

This step was evaluated over a number of months. Finally, in November 2000, at the diplomatic conference for the revision of the EPC, it was decided to leave Article 52(2) EPC unchanged. In a conference resolution adopted on 29 November 2000, the member states attending the conference "agreed to maintain for the present the EPC's current provisions on software".

Today, all EPO member states have national patent laws, which, in their basic provisions, specifically in patentability requirements, have been harmonised with the EPC. However, the attempt to introduce EU legislation by way of a directive that would have harmonised the patenting practice in the EU failed in July 2005, when the proposal for the directive was rejected by the European Parliament.



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