In the previous Industry Insight, I looked at whether software could be patented in SA. Now I will look at patenting and computer software in the US and Europe.
Patenting computer software in the US
The traditional approach of the US Patent Office to computer software and business method patents was to oppose such patents and to reject patent applications that were directed towards this subject matter. The US patent legislation provides: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore....”
So-called 'scientific truths' or 'mathematical expressions' are excluded from patentability, and the US Patent Office took the position that computer software was in effect a mathematical algorithm, and therefore not patentable.
However, in 1981, the Supreme Court case of Diamond v Diehr [1981] 450 US at 175 established that aspects of software with practical application were in fact patentable, and the US Patent Office's attitude towards this kind of invention started changing. In fact, from 1982 through to 1995, the US Patent Office granted 381 patents containing the word 'software' in their titles. “Peter Tyrin, Brown & Wood LLP (September 2000) Software and business methods are patentable in the US (Get over It)”.
Without going through the full case law history in the US, the situation changed dramatically in 1998, with the decision in the Court of Appeals for the Federal Circuit in State Street Bank and Trust Company v Signature Financial Group Inc. The court made it clear that computer software and business method inventions are subject to the same standard of patentability as any other patentable system or method if the software produces “...a useful, concrete and tangible result.”
This decision was subsequently ratified in the case of AT&T Corp v Excel Communications Inc [1999] 172 F.3d 1352 before the same court.
The US Patent Office responded quickly and abandoned its directions to its examiners to reject patents merely on the basis that their subject matter was related to computer software or methods of doing business. The resulting race to patent computer software and methods of doing business has been astounding. To date, tens of thousands of software or software-related patents have been issued in the US and thousands more are being issued every year.
The situation at present in the US is that software is patentable if it produces “...a useful, concrete and tangible result”.
State Street Bank and Trust Company v Signature Financial Group Inc:
Although the above is of particular interest to applicants seeking patent protection for their software inventions in the US, the situation in the US is somewhat removed from that of South Africa, in that the US never had an equivalent statute to section 25 of our Patents Act.
In general, the great increase in patenting of software-related inventions in the US has put pressure on patent offices in other countries to clarify their own positions.
Patenting computer software in Europe
In contrast to the position in the US, articles 52(2) and 52(3) of the European Patent Convention (EPC) 1977 have almost identical wording to section 25 of the South African Patents Act.
Therefore, the case law in Europe is very relevant to the South African situation and provides an indicator as to the way our courts will interpret section 25 of our Patents Act.
The great increase in patenting of software-related inventions in the US has put pressure on patent offices in other countries to clarify their own positions
Chris de Villiers is a partner at Spoor & Fisher.
The situation in Europe developed in a similar fashion to that in the US, with patents for computer software and business methods initially being rejected, although in this case based on specific wording in the legislation.
Again, without going into the long history of the change in attitude to the allowability of computer software, the major turning point came in 1998 when the Boards of Appeal of the European Patent Office issued a decision in regard to an IBM patent application in IBM Computer Program Product [1998] T1173/97 3.5.1 EPO Technical Board of Appeal Decision.
The invention in question was directed towards an “asynchronous resynchronisation of a commit procedure”. The court found that “...computer software is not excluded from patentability if, when it is run on a computer, it produces a further technical effect which goes beyond the normal physical interactions between program software and program hardware” (IBM Computer Program Product). This decision was important for a number of reasons, not least in that it recognised the technological nature of computer software.
In the light of this decision and further decisions by its Boards of Appeal, the European Patent Office changed its approach to examining computer software-related inventions. At present, if a software-related invention has 'technical character', a patent for the invention may be granted, subject to the normal tests of novelty and inventiveness (IBM Computer Program Product). A decision in Auction Method/Hitachi [2004] T0258/03 3.5.1 EPO Technical Board of Appeal Decision also confirmed that a method which involves a 'technical means' is an invention within the meaning of Article 52 EPC.
Thus, in Europe a claim to a computer-related invention (eg, a process which can be implemented on a computer) is potentially patentable if technical features are involved in its implementation. Non-technical features will not be taken into consideration in deciding whether or not an invention meets the test of inventiveness. Technical features regarded as trivial will also not assist in this regard. This is consistent with the 'problem and solution approach' that is usually applied by the European Patent Office when assessing inventive step, ie, the invention must involve a technical solution to a technical problem.
* In the next Industry Insight, I will compare US and European patent law.
* Chris de Villiers is a partner at Spoor & Fisher.
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