updated September, 1996 copyright 1994, 1995, 1996 Donald M. Cameron
Aird & Berlis, Toronto, Ontario
updated September, 1996
There is a global market for software, however the marketplace is sometimes foreign in more ways than one. The laws relating to the protection of software-related inventions are not identical amongst America's largest trading partners.
This paper examines the patent protection available to computer related inventions in America's largest trading partners: Canada, the EPO and Japan, and offers general guidelines for drafting patent applications for these areas.
There are several major distinctions between the American patent system and those of the rest of the world, which although commonly known are worth repeating in the context of software patents.
The United States is one of the last countries in the world to retain the "first-to-invent" system of priority of invention. All other countries have the "first-to-file" system where the first person to file a patent application is the person entitled to priority over all subsequent applications for the same invention.
Other countries have an "absolute novelty" requirement: the invention must be secret until a patent application is filed, or else no valid patent will issue. Some countries (such as Canada) have a grace period allowing commercialization of the invention before a patent application need be filed.
These countries also "lay open" for public inspection or publish pending application 18 months after the application's filing date which can detrimentally affect the secrecy of an American application which has not yet issued.
Unlike laws of nature, the laws of humans are not uniform throughout the world.
Different countries differ on the applicability of certain principles sometimes used to analyze the patentability of a computer software related invention. Those principles are:
1. You can't patent math or science.
2. Computer programs per se are not patentable; computer processes are patentable.
3. If the invention is more than just math or science,
(a) Is it patentable "as a whole"? [Wholistic]
(b) Is the only thing new the math or science? [point of novelty]
(c) Ignoring the math or science, is it otherwise patentable? [Otherwise patentable]
(d) and if it's a process, is there a "technical result", that is not just data?
The applicability of these principles, according to the legislation and jurisprudence are set out below.
Patents do not protect science. Patents protect applied science.
In Japan, the application of a scientific principle is a prerequisite to patentability. Statutory subject matter includes as inventions "any highly advanced creation of technical ideas by which a physical law of nature is utilized"(Japanese Patent Act, Article 2). If this "cause and effect" relationship is linked by a law of nature, then the subject matter is statutory. If the relationship is a mathematical formula only, then the subject matter is not statutory. Thus, inventions based on human mental activities are non-statutory.
Similarly, Article 2585 of the Italian Civil Code provides patent protection to " ... the technical application of a scientific principle, provided the latter yields direct industrial results."
Under ss. 27(3) of the Canadian Patent Act:
"No patent shall issue for ... any mere scientific principle or abstract theorem."
A logical extension of the prohibition against algorithms or abstract principles is a prohibition against the patentability of computer programs per se.
The Rules of the European Patent Office provide that computer programs "as such" are not patentable, being excluded subject matter under Articles 52(1), (2) and (3) which provide:
(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1
: (a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. [emphasis added]
The exclusions to patentability in the Rules have in common that they refer to activities which do not aim at any direct technical result but are rather of an abstract and purely intellectual nature.
Gerald Goldberg, Group Director of Electrical Computer Group 2300 of the USPTO, the section primarily responsible for examining computer program-related inventions phrased it succinctly when he said:
"Do not claim a computer program ... Do claim a computer implemented process."(AIPLA Bulletin, January-February, 1994 p.209.)
Because Patent Offices are comfortable in allowing patents on processes, then the claims should be drafted to recite traditional subject matter and not prohibited subject matter.
Using this analytical technique, the algorithm or computer program becomes "just another element" in the claim and neither adds to nor detracts from the patentability of the invention.
In Diamond v. Diehr (209 U.S.P.Q. 1, 1981) the U.S. Supreme Court held:
"...claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis."
The European Patent Office Guidelines for Examination provide in section 2, "Inventions" Part C:
"... the Examiner should disregard the form or kind of claim and concentrate on its content in order to identify the real contribution which the subject-matter claimed, considered as a whole, adds to the known art." [emphasis added]
If the algorithm is the only new element in an otherwise old system, then it is the "point of novelty" for the system. The "point of novelty" approach dissects the invention into its old and new parts. This is contrary to examining the invention "as a whole" and is currently viewed with disfavour. Nevertheless, a corollary to this technique is the "otherwise patentable" approach that dissects the patent in a slightly different manner.
This approach however was recently and indirectly incorporated into the 1993 Canadian Patent Office guidelines:
"6. The presence of a programmed general purpose computer or a program for such computer does not lend patentability to, nor subtract patentability from, an apparatus or process."
This guideline suggests that if the only novelty is the addition of an algorithm, then no patentability is added to the system so as to make it patentable. It is suggested that this test is not correct if the overall effect of the addition of the algorithm is to create a system which is "patentable as a whole".
Claims to a novel computer program stored on a ROM is not patentable in the U.K. (Gale's Application [1991] R.P.C. 305 (C.A.)) It was not a technical process which existed outside the computer nor did the program solve a technical problem lying within the computer or define a new way of operating the computer in a technical sense.
Ignoring the math or science, is it otherwise patentable?
Perhaps a derivative of the "wholistic" approach, the "otherwise patentable" approach segregates the algorithm from the rest of the claimed invention, to determine whether the rest of the invention falls within a traditional category of patentable subject matter.
The "otherwise patentable" test arises from the second part of the Freeman-Walter-Abele (In Re Freeman 573 F.2d 1237 (1978); In Re Walter 618 F.2d 758 (1980); In Re Abele 684 F.2d 902 (1982).) test:
1. Is the algorithm mathematical or non-mathematical? [It is mathematical if it essentially recites, directly or indirectly, a method of computing one or more numbers from a different set of numbers by performing a series of mathematical computations.] (Ex parte Logan 20 U.S.P.Q. 1465 at 1468 (U.S. Patent Office Board of Patent Appeals and Interferences).)
2. Is the claimed invention as a whole, no more than the algorithm itself or is it applied to or limited by physical elements or process steps of an otherwise statutory process or apparatus claim? In other words, does the claim wholly preempt the algorithm? Does the algorithm operate on a claimed physical step? (In Re Grams 888 F.2d 836.) The product of the claim must not be a pure number. Would the claim otherwise be statutory without the algorithm?
This concept is also reflected in the Canadian Patent Office's 1993 guidelines:
"5. New and useful processes incorporating a programmed computer, are directed to patentable subject matter if the computer related matter has been integrated with another practical system that falls within an area which is traditionally patentable."
In other words, since the algorithm cannot be "statutory subject matter", the patentable, statutory subject matter must be found elsewhere in the claim.
In Europe, the litmus test for patentability of any subject matter is that there be a "technical result". The fundamental requirement for the patentability of computer-related inventions in the European Patent Office is that the invention have a technical character or must provide a technical contribution to the art and not simply a mathematical one. (An Application by IBM Corporation under No. 80 107 625.8 (IBM application 80 107 625.8) decision of the European Patent Office dated October 5, 1988 p. 7.)
"Decisive is what technical contribution the invention makes to the prior art".(Vicom Systems Inc. decision of the Technical Board of Appeal, European Patent Office, Journal of the Europe Patent Office, No. 1, 1987, p. 14.)
The only Court decision on software-related inventions in Canada is Schlumberger Canada Ltd. v. Commissioner of Patents ((1981) 56 C.P.R. (2d) 204.) which claimed a system which used a computer to analyze data concerning soil characteristic measurements for oil and gas exploration:
"The appellant's application discloses a process whereby the measurements obtained in the boreholes are recorded on magnetic tapes, transmitted to a computer programmed according to the mathematical formulae set out in the specifications and converted by the computer into useful information produced in human readable form."
The Federal Court of Appeal held that what was new in the applicant's system was the discovery of the mathematical formulae to be performed, which amounted to be a "mere scientific principle or abstract theorem" - not patentable pursuant to the equivalent of ss. 29(3) of the Patent Act. The Court held that the addition of a computer to a system does not change the subject matter of the discovery so as to make it patentable. The Supreme Court of Canada refused leave to appeal the Federal Court of Appeal's decision on October 20, 1981.( (1982) 40 N.R. 90)
In the EPO the Vicom Systems Inc. (decision of the Technical Board of Appeal, European Patent Office, Journal of the Europe Patent Office, No. 1, 1987, p. 14.) case held that an algorithm that produced numerical results was not patentable.
Financial systems and document abstraction inventions are generally disallowed in the United Kingdom. U.K. practitioner Keith Beresford has noted inconsistencies between the British Patent Office and the Examining Division of the EPO with respect to the patentability of an algorithm-related system for making predictions (for example relating to exchange rates) (Beresford, Keith of Beresford & Co., London; "Protection of Computer Software - Patentability in the European Patent Office and the U.K."; FICPI First Open Forum; Rome; November 10-13, 1993 regarding the Bradford John George application), with slightly greater reluctance by the British Patent Office to allow such claims.
The U.S. Patent Office has published sample claims for
guiding practitioners on proper claim drafting.
Combining these basic principles with traditional concepts for foreign patent prosecution, the following practice tips are suggested for prosecuting foreign software-related patent applications.
1. When discussing patent protection with your client, determine your client's geographic market for the computer related invention. If the market includes or will likely include foreign markets, consider filing applications in those foreign countries.
2. Prepare your U.S. application sufficiently broad to allow maximum coverage in foreign countries. Coverage may be broader in those countries than in the United States so do not over-limit yourself in the U.S. application which may form the basis of foreign filings.
a. Draft your first claim in the context of making it statutory for the jurisdictions in which you wish to file. If it is not statutory subject matter, then you won't be allowed any protection, no matter how meritorious the invention.
b. If possible, claim to cover infringers' activities including the sale of equipment or media storing the software-related invention.
c. In the disclosure, so as to comply with Japanese practice:
i. Include flowcharts of the process. A "claim sketch", a block diagram showing each of the "means" of an apparatus claim as a block, appropriately interconnected, is required. Claim sketches can describe more than one claim but each claim must have a sketch which describes it.
ii. set out the problem that the invention is to solve and what means are used to overcome the problem.
3. Tell your inventor/client to keep his or her invention secret until you have a patent application on file. That way, your client's ability to file applications in Japan and the EPO will not be frustrated.
4. Determine or decide whether program listings are to be included in the foreign application and if so, the commercial effects of publication of the application eighteen months after filing.
5. For European applications, consider filing through the PCT. Because there is a requirement for the applications to be processed expeditiously, your application may issue to a patent sooner than one filed directly through the EPO.
6. Obtain good local counsel. Some practitioners make it a practice of obtaining two local counsel so they are not dependant on one and can compare the quality of service. Use referrals from others in your firm or those you have met and in whom you have confidence. Check their technical background and experience. Ask for copies of all correspondence with the Patent Office and ask for translations, if necessary. That way you can keep track of the prosecution.
7. Do not leave foreign filings to the last minute or else you and your client will likely incur additional costs to expedite the foreign filing.