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Software Patents

Page history last edited by Nikos Galanis 13 years, 4 months ago

Table of Contents


What is a patent?

Patents cover ideas; each patent is a monopoly on practicing some idea, which is described in the patent itself. [1]


The word "patent" has a Latin root that means "to lie open". The patent system was created to give inventors an incentive to disclose their inventions. The inventor sends a description of his invention to the patent office, and if the patent examiner at the patent office believes that it is truly an innovation, then he grants a patent. All patents are published in a patent register. In exchange for the publication of the invention, patent law gives the inventor a time-limited monopoly on the invention. During that time, the patent holder has the exclusive right to the invention (20 years now). After that time, the invention belongs to the public. [2]


Software patent does not have a universally accepted definition. One definition suggested by the Foundation for a Free Information Infrastructure is that a software patent is a "patent on any performance of a computer realised by means of a computer program". [3]


Overlap with copyright

Protection by patent protection and copyright constitute two different means of legal protection which may cover the same subject-matter, such as computer programs, since each of these two means of protection serves its own purpose. Software is protected as works of literature under the Berne Convention, thus any software written is automatically covered by copyright. This allows the creator to prevent another entity from copying the program and there is generally no need to register code in order for it to be copyrighted.


Patents, on the other hand, give their owners the right to prevent others from using a claimed invention, even if it was independently developed and there was no copying involved. In fact, one of the most recent EPO decisions T 424/03 clarifies the distinction, stating that software is patentable, because it is basically only a technical method executed on a computer, which is to be distinguished from the program itself for executing the method, the program being merely an expression of the method, and thus being copyrighted.


Patents cover the underlying methodologies embodied in a given piece of software, or the function that the software is intended to serve, independent of the particular language or code that the software is written in. Copyright prevents the direct copying of some or all of a particular version of a given piece of software, but do not prevent other authors from writing their own embodiments of the underlying methodologies. Copyright can also be used to prevent a given set of data from being copied while still allowing the author to keep the contents of said set of data a trade secret. [4]


Patent legislation

However, in patent legislation, where it is not necessary to copy in order to infringe, the notion of "independent creation" disappears (the only exception being the previous personal possession right).


There is no legal text excluding on principle the patentability of programs in the United States.


A 1998 decision of the US Federal Circuit in the "State Street Bank" case stated that a mathematical algorithm is not a priori excluded from the patentability field, as long as it produces a "useful, concrete and tangible" result. This statement, which goes against the exclusion of "abstract ideas" from the patentability field by the US Patent Act, could widen the possibilities for software protection by patent.


The situation in Japan is approximately the same, where computer programs themselves are still excluded from protection.


Situation in Europe

In July 1986, the Technical Board of Appeal of the European Patent Office delivered a decision with major consequences in the "VICOM" case. In order to be patentable, a computer process must deliver a technical solution to a problem, that is to say it must have "technical effects". Thus, for a long period of time, algorithms, which are the basis of computer programs, as they were assimilated to mathematical theories, could not produce any technical effects.


The "VICOM" decision introduces a new distinction between "pure" mathematical algorithms and "applied" algorithms to be used in a process. As a result of this case, the Technical Board of Appeal of the EPO considered that a process cannot be excluded from patentability for the sole reason that it is based on an algorithm.


This decision has led to the possibility that a process, even if it is made of non-patentable elements, may be considered both as making a contribution to the state of the art and as patentable, as long as it solves a technical problem.


Other European precedents came later on (like the IBM and IBM II decisions, cfr. Infra) as confirmation that a computer process which produces a technical effect or solves a technical problem may be patented, provided such process meets the requirements of novelty, inventive step and industrial application. [5]


Comparing the American and the European patent system

There are three main differences between European and American patent law. First, the United States awards patents to the first person to invent, whereas the rest of the world awards patents to the “first to file” the patent application. A second difference is that in the United States, the statute


permits a "grace period," meaning that the inventor can publicise or publish information about an invention for a one-year period prior to filing. In Europe, the invention would be lost if such publicity were given. A third difference is that Europeans will not patent inventions that are immoral, illegal, etc. The U.S. does not take that dimension into account, as long as the statutory requirements under the Patent Act are fulfilled, a patent is granted.


One major misconception of the American law compared with the European is the requirement for patents. In Europe there are several authors explaining that in the U.S. there are only two criteria for patentability, notably novelty and non-obviousness, and that the U.S. do not have a list of excluded subject matters.It is interesting to see that some of these misconceptions are the same on both side of the Atlantic. One of the most critical issues during the draft of the directive was regarding the "technical requirement" that Europe tries to emphasis and argues that the U.S. law is missing.


However, this is not entirely true:
  • First of all, there are four criteria for patentability in the US: be within the classes of patentable subject matters, be new, useful and non-obvious, as explained above (35 U.S.C. 101-103).
  • Second, in Europe the invention must be industrially applicable, Article 57 EPC, which means that the invention must "be made or used in any kind of industry." This is similar to the criterion used in America, even if this comprise more about operativeness than having a technical feature as the criterion industrial applicable include.
  • Third, according to the Commission the central requirement for the proposed directive is that the computer-implemented invention, in order to be patentable, "has to make an contribution in a technical field that is not obvious to a person of normal skill in the field." If the invention do not make a technical contribution it would be considered to lack an inventive step and not be patentable in Europe. The requirement of technical contribution is supposed to be biggestdifference between American and European patent law when it comes to computer-related inventions.


Examples of software patents

The European Patent Office has issued a patent on the progress bar, and a patent on accepting payment via credit cards. Software patents cover features, such as defining abbreviations in a word processor, or natural order recalculation in a spreadsheet. Patents cover algorithms that programs need to use. Patents cover aspects of file formats, such as Microsoft's new formats for Word files. MPEG 2 video format is covered by 39 different US patents. [7] In the following link you can found some patents that are given by the European Patent Office. [8]


Useful links:





http://webshop.ffii.org/, an illustration of patents in a common web page.


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