I suggest you write everything down and then reorder and fianlly reedit. My PhD supervisor used to say that if you can’t produce a half page executive summary on a topic you don’t have a coherent opinion.

Try to make a list of bullets.

BUT never fear, there is hope. The Patent Office has just issued a call for position papers on the issue to be submitted by February 15. Now if only I can figure out to squeeze everything I have to say into only 4 pages …

However, I participated in the CII seminar at the Reshut last June, and the CII Examiner (Eran Russ) did make statements to the effect that software is not technical in nature. I would have to assume that he did so with the blessings of the Rasham.

His presentation included the following bullets on a slide titled “Background”:

- Mental processes, ideas and mathematical formulas are not technological
- Writing program code is a mental process and a mathematical procedure
- Only the use of the program has some technical effect, not the program itself
- The computer remains the same when being programmed therefore it is not considered new

You could write a whole dissertation on the logical inconsistencies and misrepresentations encapsulated in just those four lines.

Regarding the US: IMHO, going forward it doesn’t make the slightest bit of real difference that software has to be tied to a machine – adding “implementable on a computing device” doesn’t limit a claim any more than just saying it’s software. Software doesn’t run in a vacuum, so who cares if I limit it to running on something that is capable of running it? I have zero problem adding this as a matter of course to a software method claim. The only real problem is invalidating previously issued patents that don’t have the magic words. I expect that the next ruling will be that if there is any hint of software in the claim, then it is de facto tied to a machine on which it can run …

Regarding Europe: I have less familiarity and admittedly less interest in EPO standards that that of the US. Having said that, I listened very closely to the EPO reps at the same seminar. Cribbing from their presentations, their policy can be summed up as:

- Computer programs “as such” are not patentable.
- A computer program is excluded from patentability because it has no (further) technical effect.
- The computer program must have the potential to provide a “further technical effect” in order not to be considered a “computer program as such”
- If at least one feature of a claim has technical character, then the whole claim has technical character.

So basically if you can point to any element of technical effect (other than just running the computer itself) you should be ok – at least according to the examiners at the EPO. The real problem is apparently proving novelty, because they will look at all the standard parts of the system and say “user interfaces, databases, and processing servers are known”, or some such statement. You have to make sure that your independent claim is narrow enough to spell out the further technical effect that you need.

And so, even though Article 52 (2) expressly excludes patentability for “programs for computers”, the EPO is actually more flexible than Israel in allowing CII applications, even though Israeli law has no such exclusion. According to both the Rasham (see Tamir) and the presentation by Russ, Israel requires that the majority of the “hybrid” invention be of patentable nature, which would appear to be in direct opposition to the opinion expressed by Judge Brenner in the oft referred to, but rarely quoted, UTC ruling. In response to the assertion that an invention is not patentable if the invention is primarily software in nature, Brenner wrote: “This approach does not seem right to me. It does not spell out how much (or what) physical changes must occur in order for them to be sufficient to warrant the issuing of a patent for an invention (or system) that includes a computer.” (My apologies for any mistakes in translation)

Go figure.

I gave it as a reason why software is sometimes (wrongly in my opinion) not considered patentable material – not technological. Another reason, is that it is considered as an (artificial) thought process and thus the algorithm is akin to human thought, and we wouldn’t want someone to have a monopoly on that would we?

I wrote a paper (in Hebrew) on the topic, and should probably translate and publish. The field is still dynamic.

The thing is, that in the US, software patents not tied to a machine or to change of state may be out soon, and in Europe, the boundary of patentable material appears to be how things display on a computer screen.

If the doctrine of double patenting precludes software patentability because it’s protectable by copyright, then how does the Rasham explain other examples of overlapping protection such as copyright/trademark and trademark/design patent (coke bottle, anyone?)?

In the first class of “Software Patenting 101″, we all learned that “software per se” is not patentable. “Software per se”, i.e. the source code, object files, etc., is indeed covered quite nicely by copyright law. You cannot, for example, just copy over some else’s exact code. However, nobody is interested in patenting “software per se”, just as nobody is interested in patenting the printouts of a car’s design (which are also covered by copyright law) – instead they want to patent the end product that they represent. Copyright doesn’t cover the logic of a novel Internet search engine any more than it covers the car built according to an engineer’s design printouts (ok, I admit that copyright could protect the screen format). So where’s the double patenting?

Regarding the technical nature of software, I would suggest that we all take a good look at pararaphs 35 and 36 of the Rasham’s Eli Tamir decision from 2006. As proof of the non-patentability of business methods, the Rasham emphasized that a requirement for both Examiners and Patent Attorneys is competence (as evidenced by a recognized degree) in a technical field, of which, according to Israeli law, computer science is one of the accepted fields. I would point out that computer science in this context cannot be construed as hardware engineering, because engineering is itself one of the five other recognized disciplines. Computer science is software. The Rasham’s official position is therefore that software is technical in nature.

When the Israeli law was changed to conform with TRIPS, Section 3 was amended to read: “in every technological field” (or perhaps that should be “in every field of technology” – I don’t have an authorized English translation on hand). I would point out that this language is extremely inclusive. The lawmakers could have, in theory, sufficed with “a technological field”, which would have saved the taxpayers the money needed to print the two letters of the extra word in Hebrew. But by adding that extra word, the meaning is clear that the idea is to be as inclusive as possible. Since this is the most recent change to the law, it should have the most weight in contemporary interpretation. Accordingly, I find it hard to understand how anyone could possibly exclude software on the basis of its technical status.