Because of its length, the chapter is famous in parts. Here is the third part.
Also in Europe and in the world in general, the tendency to grant patent protection for inventions related to software is increasing, but at a rate and scope smaller than the scope in the USA.
Most patent laws in Europe prohibit the granting of a patent for computer software. Section 1(2) of the British Patents Act of 1977[1] For example, it explicitly states that a computer program by itself ("as such") is not eligible for patent registration. The German patent law also repeats this statement.
In addition to the laws of the various countries, there are other international arrangements in Europe for registering patents. The most important among them is the European Patent Office (EPO). This office, whose seat is in Munich, was established in 1978 in accordance with the European Patent Convention, the[2]EPC - which was signed in Munich in 1973 with the aim of establishing a single registration and examination authority for Western European countries, while leaving the local patent laws in force.
It should be noted that in contrast to other international treaties on patents (the Paris Treaty and the PCT Treaty - which grant discussion advantages only to a foreign state), the EPO Treaty applies the substantive law of the treaty to all member states.
Twenty-five countries are currently members of this convention: all the European Union members, Monaco, Sweden, Finland and Turkey and as of the end of 2002: Bulgaria, the Czech Republic, Estonia, Slovakia and Slovenia. also. Norway is not a member of the convention but has amended its laws according to it. In each of these countries, an application for patent registration can be submitted both through the national patent office and through the EPO. If the application was submitted through the ETO, the patent will be valid in each of the member states listed in the registration application.
Article 2(52) of the EPC Convention is very similar to the aforementioned Article 2(1) of the British law and the German law (which were formulated following the article in the Convention). Article 52 of the Convention states:
"52(1) European Patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
52(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) Scientific theories and mathematical methods;
(b) Programs for Computers;
52(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 relates to such subject matter as such.
Despite this section, with the development of the software industry, the EPO office adopted an approach stating that software is a patentable invention when it constitutes a 'modern technical contribution to known art'. The "guidelines for examination of registration at the European Patent Office" updated in 1985 state that the examiners must concentrate on the essence of this technical contribution and not on the way it appears, so that being in the form of a computer program does not disqualify them from registration. The guidelines state that examiners must ignore:
"...the form or kind of claim and concentrate on the content in order to identify the novel contribution which the alleged 'invention' claimed makes to the known art."[3]
However, if this contribution is expressed only in the computer software itself or in a contribution to the functioning of the computer, it is not eligible for registration:
"If the contribution to the known art resides solely in a computer program, then the subject matter is not patentable in whatever manner it may be presented in the claims. for example, a claim to a computer characterized by having the particular program stored in its memory or to a process for operating a computer under the control of the program would be objectionable as a claim to the program per se..."[4]
The term "technical contribution" is not defined in the treaty or in the laws enacted according to it such as British or German law. The German Supreme Federal Court ruled in 1977 regarding the Disposition Program that "technical nature" means basing on factors other than human intellectual activity.
In the matter Gale[5] The British Court of Appeals accepted the position of the patent registrar, who refused to register a patent for an algorithm that established a new way of calculating a square root, which was embedded in ROM. It means that the instruction system is embedded in a microscopic circuit and not by magnetic means, but this system should be treated as software.
In the case of Menashe v. Hill (March 15, 2002) UK court discusses English patent in online gambling. The patent was registered for a computer system (server and personal computer with browser software). The defendant located one of the computers in the Netherlands, where the patent was not registered. The British court, after determining that it had jurisdiction over the matter, determined that it would be "monstrous" to allow infringers to evade the scope of patent protection by locating the web server in a foreign country. It was also determined that in practice the English patent is used in England even if a substantial part of the system is physically established in another country. This is one of the first decisions in Europe on this unique issue and it may be a logical basis for other decisions on the matter in Europe. An appeal is pending in the matter.
From a summary of decisions given in British courts or by an appeals committee of the EPO it appears that two characteristics can be distinguished that establish the condition of the "technical contribution"[6]
a) When the software embodies a process that causes an action to be performed in the physical world outside the computer itself. For example, a patent registration was approved by the EPO for a digital image processing system of the Vicom company based on computer software.[7]
b) When the software solves a technical problem in the system of which the computer is a part. Here it is not clear whether solving and improving internal software problems in itself will constitute a technical contribution as required.
From a summary of these cases it is not yet possible to arrive at a clearer definition of the technical requirement, which is mainly important regarding the cases applicable in the second category above, and a more detailed ruling must be awaited. However, it is clear that the European requirement is stricter than the US requirement. For example, the British Court of Appeal rejected the request of the Merrill-Lynch company to register a patent for the same software that was registered as a patent in the USA, as mentioned in the section above, due to the lack of the technical requirement.[8]
This European approach is also known as the 'technical effects' doctrine, and it is gaining a lot of weight in other countries of the world as well. This policy is more flexible than the national patent policy of many of the countries that are members of the convention (for example, France and Germany as mentioned above), and thus it is still possible to register a patent for software in most Western European countries by registering through the EPO (provided, of course, that the software meets the conditions specified above).
A recent development regarding patent protection for computer software in the European Union occurred on February 20, 2002, when the Council of the Union published the draft for a new directive regarding software protection. The draft includes, among other things, details and definitions regarding the scope and conditions of protection of patent laws in the Union for computer software.
The situation in Israel
In Israel, the issue of patent protection for software has been discussed so far in only two judgments. Bes (TA) 80/501 Rosenthal v. The Registrar of Patents[9] An appeal against the patent registrar's decision to reject an application for patent registration on calculation processes for cnc and nc machines is discussed. Judge Goldberg ruled that an invention whose main part is calculations or programming does not deserve to be registered as a patent in accordance with Section 3 of the Patent Law. In doing so, the judge confirmed the registrar's decision, which was based, among other things, on a previous decision, in application No. 37746 regarding Honeywell.[10]
Pashad did not conduct an in-depth legal analysis of the issue of patent protection for its software, an issue which at that time was still in its infancy in the world as well, and Pashad itself did not arouse much resonance in Israel. In fact, after the huge increase in the number of patents that include computer software that were registered in the world, even in Israel, despite the ruling, many patents that include computer software were registered and accepted, and even those in which the main innovation or "inventive progress" was a computer program or a computerized process and the underlying method or algorithm the process[11]
After registering such patents that include computer software became an almost routine matter, the patent registrar issued a decision on the matter in December 1993 United Technologies Corp., which completely rejects software patenting.[12] The registrar relied on the above-mentioned passage in the case of Rosenthal, and stated that "Section 3 of the Patent Law as interpreted in the ruling does not rule out only software per se, but also a programmed computer whose main novelty is expressed in the software.."
The key question in analyzing the legal situation in Israel is the interpretation of the term "process" in section 3 of the law.[13] In the Rosenthal PSD and in this decision, the term is interpreted as "concrete treatment of a certain material to change its form or condition." Hence, the invention in which the only innovation is the software or the computerized process, I conquered the aforementioned requests (which did not include any hardware in which the process that is the subject of the request will be implemented), does not constitute a process according to this definition, since it does not affect any material.
The registrar rejected the approach of the American ruling on the matter Diehr And the European in the matter Vicom the aforementioned, but adopted the minority opinion on the matter Diehr, and stated that your decision should not be adopted Vicom Because Article 52 of the ConventionEPC- Different from section 3 of the Israeli Patent Law.
However, the registrar's decision was overturned on appeal. In the judgment in case 23/94 (Y-M) United Technologies Corp. v. the registrar of patents[14] Judge Brenner followed the American ruling on the matter Diehr. The judge first determined that the request must be discussed as a complete and complete whole, and similar to the granting of a patent for a combination, when the invention is examined in the essence of the combination of well-known and well-known components, there is nothing wrong with registering a patent for an invention solely because the only innovation in it is in the component of the computer software; This is provided, of course, that the invention as a whole fulfills the requirements of the law, and is not "hybridized"placement) of parties, who do not act within mutual relations to achieve a uniform goal that has an innovation and an inventive step..."
As for the definition of the term "process", the judge stated that "the process should ultimately lead to a certain result that will have some innovation and technological progress." In the case in question, we are talking about a system designed to regulate and optimize with the help of computer software the flow of fuel to a helicopter engine, so that optimal fuel consumption is achieved; In this context, the judge stated that:
"There is no place to demand that the computer software change the structure of the computer, but it is enough that the computer software changes the fuel consumption = which is the final result. When the software is connected to physical components, receives from them, processes and emits information and instructions, resulting in optimal changes in fuel consumption... it can definitely be said and determined that these changes are the result of a "process" as defined in Section 3 of the Patents Law."[15]
Despite this precedential ruling, the judge cautioned against an overly broad determination that would allow the registration of a patent on any computer program. The judge based his decision on the above-mentioned Rosenthal case, where a finding was discussed, the main one being processes and methods of calculation, and stated that:
"Indeed, everyone agrees that "thought processes" or "thought steps" and even complete computer programming (in itself) are not eligible for registration as a patent. On the other hand, in his case, it is a system in which only one of its components is computer programming and it does not reflect only a thought process... Secondly, in Rosenthal's case, there is no technological application, whereas in the system that the challenged invention takes place, tangible technological processes take place, which are expressed in changes of state and time in the operation of the fuel valve in the helicopter's engine feed system. "[16]
In this ruling, the judge actually adopted the "technical effect" approach of the European Patent Office, and the new judgments given in the USA are not reflected in it. Despite this, this PSD opened the door to the increasing registration of patents for inventions that include computer software in Israel.
The question of the applicability of wealth creation laws in the context of patent laws was recently discussed before the judge of the District Court in Tel Aviv, Dr. Gabriel Kling in the case Merck and Co., Inc. v. Unipharm Ltd. (not yet published). The plaintiff, a company Merck The American submitted an application to the patent registrar for the registration of a patent for the active ingredient in the drug called "Fosalan” which it markets in Israel, the defendant, Unipharm, has also started marketing a medicine that includes the same active ingredient. Judge Kling ruled that the active ingredient in Poslan does not constitute a technological innovation or a new technological advance, and that a patent should not be granted for the active ingredient. In addition, the plaintiff claimed that the defendant's actions amounted to committing a decade outside of court, that is, that the defendant took advantage of the plaintiff's marketing efforts to introduce the drug to the Israeli market. Judge Kling rejected the claim while distinguishing between the decision and the decision in the A.S.I.R. ruling (see Volume II, Laws of Making Wealth). Where a product is not protected by patent law and if no copyrights have been infringed and no deceptive imitation has been made, then exploiting the marketing efforts of another does not in itself constitute unlawful enrichment. The defendant's actions, Kling stated, did not amount to making a fortune, but were in fact a common business practice.
[1] Patent Act 1977, 25-26 Eliz. 2, C. 37
[2] European Patent Convention for details see: Naomi Asia, Israel and the European market and common, n.d.i.r. - Computers, 1990, p. 66.
[3] Guidelines of the European Patent Office, see Millard, above Note 231, page 105.
[4] There, there.
[5] Re Gale's Patent Application. CA 13.12.90
[6] N. Bohm & C. Rian, Are Computer Programs Patentable? Computer Law & Practice, Vol. 7, 1991, p.213. T 208/84
[7] [1987] 2 EPOR 74
[8] RPC 561 CA [1989].
[9] PM 3 (441) 449, XNUMX.
[10] Published in the selection of decisions RName The patents for the years 1971-1974, vol. 1 p. XNUMX.
[11] Mainly, but not only, patents registered or accepted abroad. See, for example, application No. 98145 for a computer animation system, Patents Journal 252 p. 97147, application No. 591 for a device and method for computer printing, Patents Journal 98293 p. 613, application No. XNUMX for a method for distinguishing between text and graphics, Patents Journal XNUMX XNUMX p. XNUMX, and many other requests.
[12] Request No. 68409, decision dated 15.12.93, has not yet been published.
[13] Section 3 of the Patents Law, 1967-XNUMX states: "An invention, whether it is a product or a process, that is new, useful, can be used in industry or agriculture and has inventive progress - it is an invention that deserves a patent."
[14] Not yet published.
[15] Name , B. 14.
[16] Name , B. 15.
