In my previous Industry Insight, I looked at how copyrights and patents differ in the domain of software. Now I will consider the general requirements for patentability.
Before turning specifically to the patenting of computer software-related inventions and methods of doing business, it is important to understand the requirements for patentability in general, irrespective of the subject matter of the invention.
The two universal tests for patentability are that the invention must be new and inventive.
Section 25(5) of the current South African Patents Act, No 57 of 1978, states that an invention is new if it does not form part of the state of the art. The state of the art comprises anything that has been made available to the public anywhere in the world, in any way, before a first patent application is filed to protect that invention.
A global first
Two important points to note from this definition are, firstly, that in order to be patentable, the invention needs to be a global first. Secondly, it is not possible to file a patent application for an invention that has already been sold or disclosed to the public. Therefore, a prospective patentee who has already been selling their software for even a short time has missed the patent boat in almost all countries (except possibly the US and Japan).
The South African Patents Act 1978, section 25(10) states that an invention will be considered inventive if it is not obvious to a person skilled in the art at the time the invention was made. This second requirement for patentability is often the more difficult to overcome, as it includes a subjective assessment through the eyes of a notional "person skilled in the art". Other countries have equivalent requirements.
Patenting computer software in SA
In addition to the above two tests, the South African Patents Act specifically excludes certain subject matter from being patentable. Section 25(2) of the Patents Act states that:
"Anything which consists of:
(a) A discovery;
(b) A scientific theory;
(c) A mathematical model;
(d) A literary, dramatic, musical or artistic work or any other aesthetic creation;
(e) A scheme, rule or method for performing a mental act, playing a game or doing business;
(f) A program for a computer; or
(g) The presentation of information
shall not be an invention for purposes of this Act."
A prospective patentee who has already been selling their software for even a short time has missed the patent boat in almost all countries.
Chris de Villiers is a partner at Spoor & Fisher.
At first blush, it appears as if a program for a computer is not patentable in SA. However, section 25(3) states that: "The provisions of subsection (2) shall prevent, only to the extent to which a patent or an application for a patent relates to that thing as such, anything from being treated as an invention for the purposes of this Act."
It is not entirely clear what the legislature meant in subsection 3, when it used the term "...as such".
Translation please
There is currently no case law in SA interpreting the meaning of this subsection, and this, therefore, remains a grey area in South African Patent Law. However, since the provision in subsection 3 qualifies the exclusion in subsection 2, it is reasonable to interpret it as softening what would otherwise appear to be a complete exclusion.
Burrell TD (1999) states that the words "relate to that thing as such" should be interpreted as meaning "only to the extent that such an invention relates to the excluded subject matter".
Burrell further suggests the Copyright Act and Patents Act do not provide adequate protection for computer programs and that South African courts should adopt the approach outlined in the "Guidelines for Examiners in the European Patent Office".
Fortunately, as will be seen later, there have been many cases on this subject matter in the US and Europe, in particular, and substantial progress has been made in clarifying what similar or identical wording to that found in these sections means. Recent cases and patent office practice notes in the UK have also clarified the position there. The net result is that computer software is largely patentable in foreign jurisdictions, and we can extrapolate to some extent from such jurisdictions to SA.
* In my next Industry Insight, I will look at the issue of patenting computer software in the US.
* Chris de Villiers is a partner at Spoor & Fisher.
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