Software patentability Legal approaches in - PowerPoint Presentation

Slide1

Software patentability

Legal approaches in

eu

, UK, us and

russia

Anna Kravtsova, June 2017

Nature of software programs

The term ”software” or ”computer” program is used to describe a sequence of instructions to a computer.

Software is not a monolithic work

and includes several elements:

source code;

object code;

algorithm.

These elements may fall within different categories of intellectual property protection.

Protection of software

Software

is used increasingly in all fields of technology;

R&D cycle to create a new software requires a great amount of investment and needs an adequate protection;

Source and object codes are protected by copyright;

Ideas and algorithms are core elements for software

and might be protected by patents;

Software may have completely different source codes but same functionality and produce same results.

Copyright protection

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Patent protection

A patent is a 20-years right on use of technical invention, on implementation of an idea into practice as a product or a process*.

According to Art. 27 of TRIPS Agreement patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.

A computer program as such is excluded from patentable subject matter in many countries**, but underlying ideas and algorithms might be considered patentable if presented as a method of technical solution of a certain problem, under certain conditions. ***

Legal approaches in EU

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Legal approaches in EU –

EPO cases

EPO interpretation of the EPC term ”

invention” provides that controlling or carrying out a technical process is not excluded from the patentability, irrespective of whether it is implemented by hardware or by software.

EPO core case law related to software patents:

Hitachi

/

Auction method (T 258/03)

–

the invention shall involve any hardware and provide a non-obvious solution to a technical problem

–

this test is followed by EPO in many cases;

AMAZON/Gift Order (T1616/08)

–

a method “for placing a purchase order via a communications network” is an ”invention” within the meaning of Art 52 (1) EPC;

DUNS LICENSING ASSOCIATES/Estimating Sales Activity (T 0154/04)

–

a EU patent might be granted for an automated method of commercial transaction or any other computer-implemented method*.

Legal approaches in UK

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Legal approaches in US

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Legal approaches in US –

case law

US courts have opened the door to the patentability of software in early 1981 by allowing patents for a software which controlled manufacturing process (

Diamond v

Diehr

case). Subsequent cases have expanded patentability of software in US*.

Software patent applications had increased by 16% per year from 1986 to 1997**.

Since the late 1990’s subsequent to

State Street

and

AT&T

cases***, software has been patentable if it produces ”useful, concrete and tangible result” (See

Fugure

1).

However in 2014 in

Alice Corp v. CLS Bank

**** US

Supreme Court ruled that mere addition of software code to ordinary aspects of business and technology is not enough for granting a patent, and patents shall not be granted for an abstract idea.

Many software patents were invalidated based on Alice case. 

Legal approaches in US - recent developments

In 2016 with new cases reaffirmed that software is worthy of patent protection subject to a more strict analysis with application of 2-step Alice test:

-

Enfish

LLC v. Microsoft

* confirming patents for a specific non-abstract asserted improvement in computer capabilities;

-

McRO

v. Bandai Namco Games America

** protecting software patents for a unique software producing realistic lip synchronization and facial expressions which improved an existing technological process using specific features and techniques;

-

Amdocs v.

Openet

telecom

*** protecting software of an ”unconventional technological solution to a particular technological problem

”.

Legal approaches in Russia

–

RPO approach

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Conclusion

Current worldwide trend

–

to grant more patents for software, however there is no unified approach to software patentability in the world;

Subject matters of such patents are often not a source code and software itself but function which is performed by the software*;

A software patent is a vital element for successful development of small innovative businesses;

But at the same time might be abused by big corporations to limit and restrict the innovation and further development of software solutions;

The debate

on software patentability goes on.

THANK YOU!