Software patents. International and national regulations.


The topic of software patents proved controversial and very interesting in modern times due to the intermingling of serious business interests with consumer rights and the authors of the software works that need protection . On the other hand the existing problems relates purely legal collisions occurring in existing contradiction between the doctrine and the overlap in that rule concerning the copyright regulations of the software as a literary work (according to Article 10 of the Berne Convention - see . Editing from 1971 . ) As opposed to Anglo-Saxon principle view that software can be fit proprietary , ie patentable . The text of Article 10 of the " Berne Convention for the Protection of Literary and Artistic Works " is explicitly enshrined rule that " computer programs , whether in source or object be protected as literary works under the Convention ." Several years later, in standard conditions, the World Intellectual Property Organization , published in 1978, reflected the definition of the term " computer program " as " a series of instructions that are embodied in a machine readable medium , so as to make the machine that has the ability to process information , to indicate execute and achieve a particular function , task or result." It can be considered that this is the definition and the notion of "software." This conclusion was reached because of the fact that the title of "generic terms of "World Intellectual Property Organization is the " protection of computer software." Background This leads me to the view that the international system of software patents has developed in different countries of the world with different dynamics , the concept of their legislative framework is in change . They range from the initial installation of the software as being fit first object of copyright and then patent law , to modern - think highly exaggerated argument that software as a success of the creative industries and science should not be " monopolized " by patents business and has become one of the free and free achievements of society.

1.Software patents in the Anglo -Saxon patent system. Patent law of the United Kingdom at present is entirely consistent with the meaning of " European Patent Convention" , in this sense, computer programs are beyond the scope of patentability requirements . Case law of England , however, argues that the alleged invention can be viewed as a patent only if it provides a real contribution , which is of a technical nature . Therefore, a computer program concerning concepts for business process can not be registered as an invention , but a computer program to implement the industrial process may be suitable object of patent law.

Example of what is historical fact that on May 21, 1962 . , England filed a patent for a software company from " BP " entitled " computer designed to solve "A Computer Arranged for the Automatic Solution of Linear Programming Problems" invention is concerned with the effective management of computer memory , aimed at creating simple mathematical algorithms that are implemented as a result of purely software tools . linear programming or linear optimization method to achieve the best economic result for maximum profit and minimize costs, which is a mathematical model , represented by a linear relationship . present in linear programming is used in transport, energy , telecommunications and design. commented in this case , the English patent software for linear programming concerns optimized process to create algorithm for fast data transmission. patent was registered on August 17, 1966 (available on the website of the European Patent Office as abstract № GB1039141), he is considered one of the first software patents in the world.

In Australia , which is also part of the Anglo- Saxon patent system purely abstract methods of doing business are not considered patentable , but if the method is carried out using a computer , it is an exception to the general rule , and the invention is patentable .

Canadian jurisprudence e associated with two major case studies that illustrate the great importance of certain criteria determining the patentability of inventions which include computer software. The first is related to the case that in 1981 . , The Federal Court of Canada considered the patentability of an invention that involves software trial " Schlumberger " (from the English "Schlumberger") applicant whose software went off patent registration of Canadian Patent Office has appealed the decision , seeking to patent a method for the analysis of measurements from boreholes for exploration for oil and gas. The application of the invention relates to a process in which the measurements are processed by a computer for the purpose of mathematical analysis . Court held in the grounds of the decision , that the calculations related to the invention ( if they were made by man) "mathematical formulas and a number of purely mental operations". The Court also found that the mathematical formulas are not patentable under " Patents Act " of Canada as it relates to scientific principles or abstract theorems. Federal Court of Canada reasons for its decision noting that "the fact that a computer is used to implement the discovery does not change the nature of this discovery. " In this context, the appeal of the case " Schlumberger " is rejected and the corresponding software product is recognized as patentable as computer use in the described situation does not contribute to patent the method commented nor to define him as the alleged object of the invention.

In 2011 . Canadian federal court for the second time addresses the issue of the patentability of an invention that uses software in the ' "(from the English " "). Applicants from " Amazon " who have been refused registration of software patents by the Patent Office of Canada, wanted to patent a method for online purchases "one-click " , which allows users to make online purchases without the need to re-enter billing and delivery. Federal Court remitted the case for a revision of the Patent Office of Canada, on the grounds that the decision to reject the patent and in particular the finding that the subject of the patent was unpatentable and incorrect and patents should be dealt with as such patentable subject matter. Judge Phelan , who considered the case , based its decision on the view that the claims entirely built five requirements for patentability that exist in the Canadian " Patent Act " , as disclosed invention relates to a " machine" that is patentable subject . On the basis of this dispute patent " Amazon " was registered in December 2011 . This interesting case led to a change in Canadian patent law concerning options for registration of software patents. On March 8, 2013 . Canadian Patent Office announced changes in practice on the expertise of patents based on judgment " Amazon " . Office published new guidelines for determining the patentability of an invention as based on the targeted building claims regarding software patents , called briefly CII ( from English Computer-Implemented Inventions). In guidance on the expertise of patent applications to the Patent Office of Canada ( from English Manual of Patent Office Practice (MOPOP) and its Article 16 explicitly enshrined rule that the software included in the invention can be claimed only as a method ( product , process or production method ) or as part of the machine (usually a device that works by computer), and / or product ( product manufacturing ) . MOPOP The guide also provides that no software product can not be applied for a patent when it is a computer program , database or computer-generated signals.

1.1. Case law on software patents in the U.S. Patent Office has registered inventions that can be classified as software patents in the early 70s of last century. Statistics show that since 1985 . , When an average of 2,000 registered software patents per year until 2000 . their size has increased nearly 10 times since the beginning of the millennium so far are annually nearly 18,000 software patents . One of the first cases in the jurisprudence of the United States concerning software patents is that the case " against Gottschalk Benson " ( from English Gottschalk v. Benson - 409 US 63 (1972) . Case concerns a dispute in relation to that in U.S. Patent Office an application for an invention that relates to the processing of data from the program and, in particular , their conversion into numeric information for personal computers. detail - the request for patent shows a method for converting signals from binary coded form pure binary code of ones and zeros . applicants appealed to the Patent Office on America to register a patent on the ground that, under Article 35 of the patent law of the United States can not be patented conventional programs for general use in computers , which are a series of mathematical duties or psychological steps (see patent Act, 35 USC § 100 (b). Pp. 409 US 64-73). U.S. Supreme Court issued a decision rejecting a patent, the reasoning suggests that a patent for a process not can be registered , especially " if it is based on mathematical formulas and the practical effect of it would be a patent on the algorithm itself ."

In 1981 . The U.S. Supreme Court made a new interpretation of Article 35 of the U.S. Patent Act , in relation to the case study on the best way software patents in the case Diamond v. Diehr, 450 US 175 (1981) patent application at issue in dispute concerns applied for invention for casting and maturation of crude , synthetic rubber . Process uses a matrix of accurate formation and maturation of the material under heat and pressure , followed by curing synthetic rubber, in the form , so that the product will retain its shape and to be functionally operative after completion of the process.

The applicants claim that their process ensures the production of molded articles which are properly hardened . Achieving the perfect hardening is dependent on several factors including the thickness of the product at the molding temperature of the process of molding , and the amount of time during which the device was allowed to stand in the press. The best combination of time, temperature and curing , which is important for the opening of the press, is calculated based on the equation of Svante Arrhenius (Swedish physical chemist , Nobel Prize in Chemistry , the creator of the theory of electrolytic dissociation ) .

The applicants put forward the innovation of filed patent with their contribution to continuously monitor and measure the temperature inside the mold . These temperature measurements are performed automatically by the computer, which repeatedly recalculate the setting time according to the equation of Arrhenius .

Experts in the U.S. Patent Office rejected the claims of the applicants on the sole ground that they are unlegal on the basis of Article 35 of the United States patent laws as steps in the claims shall be made using a computer under control of a stored program , citing on precedent " Gottschalk against Benson " ( from English Gottschalk v. Benson - 409 US 63 (1972) . All this led experts to conclude that their patent claims the applicants seek protection of a computer program for molding press.

On appeal, the Supreme Court concluded that the applicants' claims were not directed to the protection of a mathematical algorithm or method of calculation , but rather to a process for molding rubber articles by solving a practical problem that has arisen in connection with the formation and hardening rubber products . Therefore , the court shall issue a decision which takes the view that " claims may not be illegal simply because they contain mathematical formula , computer program or digital code" - rather, they rather be patentable if implemented in structure or process that can be viewed in its entirety as technically feasible , ie perform a technical function which the patent laws regarded as an object of protection.

In relation to the different treatment of patent rights in different parts of the country in 1982 . U.S. Congress creates a new the Specialized Court - United States Court of Appeals for the Federal Circuit, abbreviated CAFC, to handle patent cases . Following several important fate decisions of this court , in the early 90s the jurisprudence of the United States finally established the patentability of software patents as in 1996 . U.S. Patent Office accepted the so-called Final Computer Related Examination Guidelines. Relevant documents advocating the rule that " the application for inventions relating to software are subject to mandatory examination. This requirement should be distinguished from the differently worded prohibitions against patenting abstract ideas , natural laws or phenomena "that exist in U.S. law and other national and international acts ( including Bulgarian Law on Patents and Utility and registration models - 6, paragraph 2 , item 1 ) .

The recent growth of the Internet and e-commerce has led to the filing and registration of numerous patents U.S. patents concerning the implemented business models (methods ) in software, with the understanding that how business models are patentable is different theoretical and practical question of whether software subject to patenting. For many years the U.S. Patent Office supports the view that methods of doing business or the business models are not patentable . With the growth of patent applications related to the Internet or e-commerce methods in the 80s and 90s , the U.S. Patent Office established a solid practice that advocate the rule that it is not practically justified to determine what invention is such a technical or business method. In this vein, the experts were not required to consider a claimed invention as a method of doing business (whether the application contains such claims ) , but rather be guided by whether the available general substantive requirements that would be important de jure patentability of any invention in principle.

2.Software patents in the European patent system. Patentability of software, computer programs and / or computer-implemented inventions under the European Patent Convention ( EPC) is a legal option under which those objects would be registered under international instrument pointing the Grant of European Patents, adopted on 5 October 1973 . This criterion ( patentability ) incorporates and objective assessment of whether European patent granted by the European Patent Office (EPO ) in those referred to specific areas , referred to as the " software patents " are considered valid by national patent offices and courts respectively , as fit subject of patent rights . It should be noted , was based in Munich, Germany "Foundation for a Free Information Infrastructure" (FFII), which at the beginning of the century actively fought the so-called "patent trolls software " Europe was given a definition of software patents with the idea that he should not be allowed as an existing object of the patent law, since it described as " patent on any type of computer representation made by a computer program ." In 2005 . EPO software patents define an invention aimed at protecting computer program declared as such by itself or algorithm , or computer- implemented business method that has no technical contribution. This definition is the EPO will be accepted so called . " Directive on the patentability of software ." After nearly three annual debate on the European Parliament rejected the unanimous adoption of the directive commented on the grounds that its legislative establishment would allow the patentability of computer-implemented inventions , ie inventions achieved by using a computer , computer network or similar equipment at least would be contrary to international law and especially the Berne Convention.

It is correct to mark the fact that within the EPA and in particular its Art. 52 " computer programs " are not recognized for inventions that would receive protection as European patents. This exclusion from patentability applies only to cases in which the European patent application relates solely to the computer program itself . In connection with the rule of Article 52 EPC applications that involve " software patents " are subject to extremely strict examination , compared to that which as is done in the U.S. on the same site, but that does not mean that within the European Patent Office all inventions which concern or incorporating software are de jure not patentable .

The European Patent Convention advocates the rule that a European patent can be protected inventions in all fields of technology, which are new, involve an inventive step and industrial would be successfully applied ( Article 51 , paragraph 1 of the EPC ) . However, in Article 52 , para . 2 EPC excludes from patentability the following sites:

- discoveries, scientific theories and mathematical methods;

- aesthetic creations ;

- plans, rules and methods for performing mental acts , games or rules for doing - - business ( business methods) and computer programs;

The second subparagraph of lack of patentability applied only to the extent to which the European patent application or European patent relating to dump in that text objects themselves . Confirmation of what was said is that the alleged practices of the Boards of Appeal of the EPO , according to the motive that an invention is patentable if it offers new and non-obvious technical solution to a technical problem. provides a new and non- obvious " technical " solution to a technical problem. Alternatively , the technical problem to be solved can be focused on the task and how the computer itself can be made easier to use (assuming that it is also part of the art ) . Case Study in this direction is a decision № T928/03, given by the Board of Appeal of the European Patent Office on 2 June 2006. , In connection with the request № 97120468.0, with the applicant company KONAMI CO., LTD . The proposed patent makes it possible to visualize indicator ( interface that helps the player with certain information - for example, errors ) on the screen of the user of an interactive video game that technical result is not mediated by psychological processes in the human brain , but instead it is regarding your specific technical function on the screen. The functionality of the invention is not vitiated by the fact that the displayed information is also entered in the user's use interact with the video game displayed on the screen.

Practice in relation to software patents applied for or registered in Europe contrasts with that of other countries in the Anglo-Saxon system , such as the U.S. and Australia. In these countries, only computer use is reason enough to make a business method patentable even if the computer is not used in a new or creative way , but only mediates and provides technical business method patentable possesses characteristics. Such a position is explicitly rejected by the EPO in deciding patentability of software patents as an example in this respect is the case № T258/03, given by the Board of Appeal of the European Patent Office on 21 April 2004 . , In connection with the request № 97306722.6, with the applicant company " Hitachi " ( from English HITACHI, LTD). In this case the Board of Appeal of the EPO held that methodology consisting of modifications of business models aimed at circumventing a technical problem rather than solving it by technical means , does not contribute to the patentability of the claimed invention . In this case it is a computer program that connects several computing devices in a network in order to tender for a product. Given that the claimed invention does not offer a new technical solution and fully implemented the norm of Article 52 , paragraph 2 , third proposal of the EPC , the same was rejected as unpatentable by the Board of Appeal of the EPO. 

2.1 Case law on software patents in the European Patent Office.

EPO practice is quite consistent in the treatment of various constituent elements of Article 52 , paragraph 2 of the EPC. For example, the mathematical methods are firmly excluded from patentability , but electrical filter designed in accordance with such methods will be registered as a patent if it meets the requirements of Article 52 , paragraph 1 of the EPC.

In connection with the hypothesis of article 52 , paragraph 2 of the EPC computer programs are patentable insofar as they provide a technical solution that contributes to the enrichment of the art. In accordance with the law of the Boards of Appeal of the EPO , " technical contribution" usually means future technical effect which goes beyond the normal physical interactions between a program and a computer. EPO Boards of Appeal also took the ground that technical effect provided by the computer program may be, for example , reduced access time to memory , better control of a robotic arm or an improved reception and / or decode the radio . An important point is that this effect should not be external to the computer from which the program is implemented - for example, increasing the impact on the user interface or the optimization of time to access the hard disk can be classified as technical effects that lead to patentability of an application for a software patent.

As of 2013, the underlying substantive criterion used to differentiate patentable inventions from those who can not be registered , the object that the application is technically feasible . Whether the invention s got the "technical character", is assessed by examination without considering the prior art , ie the so-called " technical contribution" (which concerns the criterion the novelty , but not the technical feasibility ) . This reasoning leads to the conclusion that whether an invention is technically feasible nothing to do with whether the same invention has contributed to art. Stefan Staynbrener (former Chairman of the Board for EPV ) takes the view that any object in the event of juicy Article 52 , paragraph 2 of the EPC - including computer programs can be part of a claimed invention if the latter is technically applicability or contribute to it ( such as in particular it is solved the technical problem by using technical means and achieve a technical effect , have occurred or technical synergies are achieved technical applications , in other words - the object is proved technically usable ).

Actually about 1996 has a change in the practice of the EPO regarding what invention has a " technical effect " or enforceability under the norm of Article 52 , para . 1 and 2 of the EPC. Under the criterion " inventive step " (see decision № T 52/85 EPO ) , the requested object does not refer to the invention as defined in Article 52 , paragraph 1 of the EPC, if this is technical input relating to the area which is patentable.

Landmark ruling on the interpretation of Article 51 , paragraphs 1 and 2 of the EPC is this case № T 258/ 03 concerning the application of " Hitachi " on a method for tendering . Commented on the decision of the Board of Appeal of the European Patent Office (EPO ) was delivered on 21 April 2004 . , It significantly affects the assessment of the technical character of an invention and its inventive step. Reasons for the decision shows that " a method involving technical means is an invention within the meaning of Article 52 , paragraph 1 of the EPC. Decision № T 258/ 03, in contrast with a slightly older decision the Board of Appeal of the EPO № T 931 / 95 concerning the application of " Pension Benefit Systems Partnership" latter embodies the rule that "the mere fact that the database processing is done by computing resources , ie technical means does not make mandatory the fact that the claims set out grounds for the technical nature of the claimed registration method . "

I tried to explain that in fact the decision № 258/ 03 on an equal footing equipment patents ( related to software ) and processes ( related to software or indirect ) on the examination of patentability on the grounds of Article 52 , paragraph 2 of the EPC. In other words, the Board of Appeal of the EPO introduced by this decision new grounds examination, stating that the term " invention " in the definition of patentable inventions , contained in Article 52 , paragraph 1 of the EPC should be interpreted as " subject of a technical nature . " So the presence of hardware in the stated claims concerning business method that provides the implementation of the technical result will be enough to overcome any objections expertise on the patentability of business methods - in particular, the likelihood of his technical contribution. Decisions as T № 258/ 03 made it clear that the criterion " technical contribution" is actually longer apply. However, it should be highlighted that not all methods involving the use of technical means are patentable . They are it must comply with the substantive absolute grounds for patentability , namely new, represent non-obvious technical solution to a technical problem and are industrially applicable .

Expertise regarding the hypothesis of article 52 , paragraph 2 and paragraph 3 respectively of the EPC is only the first element of a complex set of facts as substantive patentability criteria . Computer programs claimed as software patents are often rejected due to lack of second constituent elements - an inventive step . First and second may not be an ideal combination , ie the presence of only one of the two elements leads to a lack of patentability , in view of this it should be noted once again that according to the modern practice of Board of EPO patentability really does not matter whether an invention has a " technical contribution" or not.

Interpretation made by the EPO Boards of Appeal of the term " invention " on the definition concerning patentable objects imposed by the adjustment in the case law in relation to the element "inventive step" . This change concerns the case № T641/00 , which is attributed to the conclusion that the invention may consist in the aggregate between technical and non-technical characteristics. In such cases , the EPO usually apply the so-called "Comvik approach", to assess whether the invention has an " inventive step ." Any non-technical function , ie one of the areas excluded from the patentability under Article 52 , paragraph 2 and 3 of the EPC can not be taken into account in the examination concerning the criterion of " inventive step " unless it interacts with technical subject ( the subject of the patent application ), which is aimed at solving the technical problem. Against this background is the decision № T0154/04 , which is given by the Board of Appeal of the EPO on 15 November 2006 . claimed in patent № 94912949.8 of " DUNS LICENSING ASSOCIATES, LP” reasoning of this decision rule argue that methods of business studies excluded " as such " from patentability under Article 52 , para . 2 and 3 of the EPC . Board of Appeal also held that the collection and evaluation of database as part of the business research method does not pass the technical character of the claimed method if this process does not contribute to the solution of a technical problem. The judgment underlies the normative rule that, in connection with the case of article 52 , paragraph 1 of the EPC to be regarded as an invention patentable , it must satisfy the requirements of novelty, inventive step and industrial applicability.

Regarding the term " prior art ", which in theory is used as the starting point for evaluation of inventive step , it must be said that it is interpreted as a " prior art " , but from the perspective of a person skilled in the particular field of technology (eg software engineer or developer ) . The purpose of pursuing such expertise are how much a technical problem can be solved made by the relevant technical specialist to the priority filing date of the patent. In this context , when it comes to software patents can not be chosen expert in marketing or insurance policies instead Espen on computer hardware or management of computer memory . This means that the mere execution of a business process from a computer or computer network is rarely associated with the presence of an inventive step , unless this process leads to computer support and greatly improved industrial result or using the computer achieve more effective management The computer itself memory. Here again we return to the view that the inventive step is only available when software patents is not the case itself , and is industrially applicable .

An interesting fact is that the practice of the EPO Boards of Appeal is not bound by the first-instance departments of the EPO (ie department, expertise ) , they reserve the right to decide on the patentability comfortable with . I think this interdepartmental structure of enforcement is paradoxical and threatens subjectivity and non-application of highly motivated and deeply researched legal framework relating to the EPC, has become a constant practice of the Board. Another specific point is that, under Article 99 of the EPC within nine months from the publication of the grant of the European patent in the European Patent Bulletin , any other person (natural or legal one) may file an opposition against the patent on the following grounds :

- subject matter of the European patent is not patentable within the meaning of Articles 52 to 57 ;

- European patent does not disclose the invention in a manner sufficiently clear and complete for it to be done by a specialist in the field ;

- subject matter of the European patent extends beyond the scope of the original application or the patent has been granted for a divisional application or a new application filed under Article 61 , beyond the content of the original earlier application .

The peculiarity here is that the opposition procedure before the EPO can have two outputs ( see Decision № T2427/09, declared on software patents concerning remote access to Internet resources company "NEOMEDIA"). In the first case , if the " Department of opposition" considers that there is at least one proven basis, which is an obstacle for the maintenance of the European patent , it shall declare the patent invalid or otherwise - reject the opposition as unfounded ( Article 101 , para . 2 EPC ) . In the second option , if the " Department of opposition" assume that because made by the patent during opposition proceedings amendments , the patent and the invention to which it relates meet the requirements of the EPC, the patent is decided to be held so as amended . If you " department opposition" Consider that the modifications in the procedure of opposition did not meet the substantive requirements of the EPC , the patent shall be declared invalid ( Article 101 , paragraph 3 of the EPC ) .

3 . Software patents in Bulgarian patent system. The general opinion which advocates Bulgarian legislation and in particular Article 6, Paragraph 2, Item 3 of the Law on Patents and Utility Models ( ZPRPM ) is that there are patentable " schemes, rules and methods for performing mental acts, games or doing business, and computer programs. As in international practice is explicitly exempted from this rule provides that Article 6, Paragraph 2, Item 3 of ZPRPM applies only when desired protection is required only to dump objects themselves . This means that if they are implemented in or promote technical result of requests for registration of inventions which are new, involve an inventive step and are susceptible of industrial application , it can talk about so-called software patent ( Article 6 , para . 3 ZPRPM ) . An example is a medical devices (but not methods - see the prohibition of Article 7 , paragraph 1 of ZPRPM ) whose technical score ( such as a pacemaker or an orthopedic robot drilling joints with a computer terminal ) was instrumental as work by software and / or hardware that transmits information about how it works , ie what specific technical result of the operation of the technical device in the human body . This patented device is a robot " Doro ". Tee constitute orthopedic robot for automatic drilling, as in the appended claims includes its power supply and electronic blocks , computer terminals , mechanical module , etc. Technical application of this robot is controlled by its control unit. It consists of a main power supply , power supplies engines , power modules, controllers , and the controller itself . There are displayed and terminals for connection to a computer. The latter allows for reprogramming and software security of the robot itself , which allows drilling of bone in real-time. Commenting invention is a registered utility model № 1053/24.07.2008. and a patent for the invention № 66136/17.08.2011 in the Patent Office of the Republic of Bulgaria .

Bulgarian invention particularly interesting in the field of so-called "software patents " I think it is also patent № 63704/04.10.2002. , under the name "Digital literacy and method of communication in the mother tongue ." Invention ( written by engineer Koycho Mitev ) a method for phonetic structural analysis of human speech , and through the use of the digits of the decimal number system reproduce all the world's languages and dialects . Words of each language are introduced into the computer that mediates the process of playing them in conversation (eg conferencing you speak Bulgarian , on the other hand take the conversation in Chinese) .

In that sector of the Bulgarian economy , which deals with the creation of software products is the fastest growing and stable market segment in which they are invested significant capital , I can not explain the lack of growth of patents that can be qualified as " software " in natural reservations expressed in this exhibition. Actually missing and judicial practice in Bulgaria the problem of " software patents ", which give detailed regulations on this subject in modern patent law in order to better enforcement , stabilize the business and enterprise , all of which confirms the conclusion that low patenting activity . I hope this article is to give proper guidance to the business and has led to the view that software patents are available both in Europe and in Bulgaria , but specific characteristics of the subject of patent protection.


Author: Mr.Atanas Kostov – European patent attorney