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:
- An invention as defined in the claims must be in an area of technology. This is implicit in Section 3 of the Israel Law.
- 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.
- The claimed invention taken in its entirety must have a significant expression in an area of technology.
- 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.
- 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.
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.