Patenting of Computer Software - Related Inventions - Continued

In our previous article entitled "Patenting of Computer Software-Related Inventions" we pointed out that certain categories of computer software or software-related inventions may in fact be patentable in South Africa, and are certainly patentable in other countries.

Recent cases in Europe and the USA have indicated a further development of the international trend towards the patentability of computer software.

In the State Street Bank versus Signature Financial Group case in the USA, the court went a step further in relaxing its approach to the patentability of computer software by allowing a patent for an electronic commerce system, based on a computer system and steps thereof. The Court stated that financial services software is patentable when it produces a "... useful, concrete and tangible result." The key criterion for our purposes is that the computer software must provide a useful result. In other words, as long as the invention is useful, it is patentable in the USA. This is essentially the basic test for patentability.

As stated previously, South African patent law is more similar to European law with regard to the patentability of computer software, as the relevant parts of Section 25 of the South African Patents Act are essentially identical to the relevant parts of Article 52 of the European Patent Convention.

European law with regard to the patentability of computer software has always been regarded as being stricter than in the USA. Nevertheless, as stated in a presentation given by European Patent Attorney Kurt Kahler at the meeting of the Silicon Valley Patent Attorneys Association in April 1999, only 1% of 20 000 recent software-related applications were rejected in Europe for reasons relating to the computer software nature of the inventions in question. This is a very encouraging statistic for would-be patentees.

In two recent decisions by the Board of Appeal of the European Patent Office, a further step was taken by the board towards harmonizing European and US patent law with respect to the patentability of computer software, thus further relaxing the position in Europe.

In July 1998 the Board of Appeal found that a computer program claim by itself may be patentable if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect. This technical effect must go beyond the normal physical interactions between the program (software) and the computer (hardware) on which it is run, and the technical effect may be achieved by an industrial process (application software) or by an internal function of the computer under the influence of the software (system software). If a computer program brings about such a technical effect, then it should be dealt with in the same manner as all other inventions to test whether it is new and inventive.

For example, in the case in point, the Board of Appeal found that a computer program which allowed an asynchronous resynchronization of a commit procedure was a patentable invention. Here the technical effect was the functioning of the computer under the influence of the program which went above and beyond the normal functioning of a computer.

In conclusion, we once again stress that the trend in allowing software related inventions to be patented is becoming stronger world-wide, and that any potential patentees should investigate the patentability of their software-related invention before they are made available to the public. Certainly, if there is any interest in the USA or Europe as a target market, a potential patentee would be well advised to consider the possibility of filing a US or European patent application, or alternatively an International (PCT) patent application, preferably through the US or European Patent Offices.

Lance Abramson

Chris de Villiers

Spoor & Fisher

Date published: 1999/10/01
Author: Lance Abramson & Chris de Villiers

Tags: patents computer software related inventions