Patentability of Software – Notice from the Israel Patent Office

The Israel Patent Office has published an announcement regarding the patentability of software in Israel. The announcement follows a round table discussion held in November 2009, and a call for amicus briefs from the public.

The announcement relates to the spectrum of positions submitted, consulting with jurists and examiners, and looking at the Law in the US, Europe and the UK.

The following is a translation of the Notice:

  1. An invention as defined in the claims must be in an area of technology. This is implicit in Section 3 of the Israel Law.
  2. The invention will be examined in its entirety without separating between software and hardware elements, without focussing on the software but rather on the contribution of the Invention to the State of the Art. The contribution has to find expression in the Claim-set.
  3. The claimed invention taken in its entirety must have a significant expression in an area of technology.
  4. The inventive contribution as claimed in the claims must be novel and inventive (non-obvious) as required by Section 3. Alternatively, the means by which the invention achieves the contribution mist be novel and must include an inventive step.
  5. If the claimed process is only the steps carried out by the computer, the process will not be considered patentable subject matter. The software per se. is not a technological expression, since the software itself is protected by copyright.

The practicalities of the policy, together with the procedures that will be drafted following the change in policy will be published by the end of January. With their publication, the new policy will be implemented by the Israel Patent Office. The policy will be applied to all applications whose examination has not yet finished by the date of implementation, i.e. by 1 February 2011.

COMMENT

I do not fully understand the ramifications of this change of policy, which is worrying as I do draft software implemented patents for clients and need to advise them and also associates and clients filing in Israel under the Paris Convention or via the PCT mechanism, what is patentable subject matter in Israel. I hope that the guidelines will clarify the issue.

I suspect that the problem with my understanding is more a problem of the notice more than with my abilities. I wrote a semester paper on the subject of software patentability in Israel as part of my Law Degree, and despite getting a 98% grade for it, I wasn’t able to explain why certain patents issued under the old policy were allowed and others weren’t.

Nevertheless, I am pleased that the current Commissioner has ruled on this issue. The decision comes out on his last day in Office, rather like the US Supreme Court’s long-awaited and somewhat of a let-down decision on business method patentability in the US, in re Bilski.

I suspect that the interim Commissioner, Dr Guy Rotkopf, who will be serving as commissioner for the next month until a replacement is announced in February may find drafting clear guidelines and implementation a little difficult.

We await developments.



Categories: Intellectual Property, Israel, Israel Copyright, Israel Patent Office, software Patents

1 reply

  1. I think that the comparison to the Bilski decision is rather apt. Articles 1-4 pretty much constitute the IPO’s belated agreement to accept UTC as binding, after ignoring it, tacitly or otherwise, in recent policy. Much ado about something which should be nothing.

    I am troubled, however, by article 5 which is apparently an affirmation of the Commisioner’s opinion that software isn’t patentable because software per se is covered by copyright, and therefore the process it effects when run on a computer is precluded from patentability by “double patenting”.

    After repeatedly rereading article 5, I don’t understand how a “claimed process” can be equated with “software per se” to preclude patentability under the rubric that software per se is covered by copyright – while the claimed process is covered by neither copyright, nor patent law. Am I missing something?

    Article 5 also fails the “take a step back and think logically test”. The statement “The software per se is not a technological expression …” is fundamentally wrong, no matter if copyright covers it or not. It would be valid to argue that software is not patentable “since the software itself is protected by copyright.” But to deny that software has technological expression is to deny universally accepted fact. There is a reason that computer science is one of the 6 degree majors that qualifies a candidate to be an Israeli patent attorney – it’s because computer science is a technological field. And no one should make the mistake that computer science refers to hardware – that area is covered by engineering.

    One last point about technology: Israeli law was amended several years ago to read all areas of technology. Not “an area of technology” as stated in articles 1 and 3, but all areas. The Israeli legislature intentionally and knowingly expanded the wording to be all inclusive. Does anyone functioning in today’s society sincerely doubt that software, even software per se, falls under the rubric of all areas of technology?

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