Patenting Computer-implemented inventions (software) are an exciting and ever-changing area of intellectual property law. Why is this and how did we get here?
The precursor to modern software was punched cards, each hole in a punched card representing computer data and instructions. This led early legislators to include punched cards in copyright law and exclude them from patent law. After all, the punch card (software) was well protected if you couldn’t copy the layout of the holes in the punch cards.
As software evolved into the modern era, it quickly became apparent to software developers that copyright law was not sufficient protection for their software, as software could often be relatively easily rewritten in another language, for example, and avoid copyright protection .
What followed often sparked a heated debate between the two camps: whether or not to include software under the umbrella of patent law. The first view is that software should be treated no differently than other forms of technology and should be fully patentable if it is novel and inventive. A second view is that allowing software to be patented stifles innovation.
What has essentially happened is that software patent law has developed in different ways in different countries, with two main approaches.
One approach allows software to be patented, provided that the functionality implemented by the software is new and inventive. This approach reflects the view that software should be treated no differently than any other form of technology. An example of this would be a new and inventive business method that is implemented in software that can be patented in some countries.
Another approach, and more widely held, is that software can be patented only if the software provides a technical effect, or in other words, provides a technical solution to a technical problem. A few examples of such “technical effect” software would be software that speeds up data transfer or software that compresses data for better storage. In these countries, the above example of a new and inventive business method implemented in software is not patentable.
The landscape is so constantly changing that even last month the High Court of Australia, the country’s highest court, issued a separate ruling on the patentability of computer software inventions. Three judges found the patent for a gaming machine, including hardware and software, patentable, and three found the patent invalid based on an issue related to the patentability of computer software.
In South Africa, we are also in a unique position. Our Patents Act in section 25(2)(e) excludes software from patentability, but this is qualified by section 25(3) which effectively states that the exclusion applies only to the extent that the invention relates to the subject matter as such .
There is currently no case law in South Africa explaining the meaning of these sections and we are therefore left in a gray area as to what software can be patented in South Africa.
So what does this leave software developers?
Because this area of patent law is complex and constantly changing, the best advice for software developers is that if they have developed software that they believe is novel and inventive, they should not assume that the software provision is not patentable. Rather, they should consult a patent attorney who is an expert in the field.
In the Republic of South Africa, patents are not examined at the time of application and only if the patent is enforced or challenged. In addition, a patent application cannot be filed for software that has already been released into the public domain. This means that software developers cannot wait for the first court case to be heard and then decide whether they want to apply for patent protection for their software. In contrast, if they want patent protection, they must apply for a patent before disclosing their invention. The patent application will then be granted and the validity of the patent will only be determined at some point in the future when our courts make their first decision on the matter.
- By Lance Abramson, Partner at Spoor & Fisher