Because of its length, the chapter is famous in parts. Here is the fourth part.
The ConventionPCT- is a convention in which more than 80 countries in the world are members, including all the developed countries such as the USA and the countries of the European Community.[1] The convention allows the patent applicant to submit a patent application simultaneously in all or some of the member states of his choice, and at the same time enjoy a period of up to eighteen additional months beyond the one-year period granted by the Paris Convention, before having to pay in full all the costs of translation and filing the applications in the countries he chose, to name Local patent attorneys, etc. (this is the 'international' period of the patent application).
During this period, the applicant receives a search report and an evaluation report that help him in evaluating the chances of the application being registered as a patent. These reports also help the various patent registrar offices if the applicant has decided to proceed with patent registration in the target countries (this is the 'national' period of the patent application).
The Patents Law, 1967-1995 was amended in XNUMX,[2] And among the other amendments added to the law Chapter C1, which regulates in law the mechanism of joining the ConventionPCT-. Israel's membership in the convention is effective as of June 1996.[3]
3.6 The dispute between supporters and opponents of patent protection for software
The growing number of applications and patents granted for software or inventions related to software, mainly in the US, is causing a serious dispute between computer and legal professionals in the US and the world as to whether the increased tendency to grant software patents will benefit or harm the software industry, and whether computer software in general deserves patent protection; Below we will briefly discuss the advantages and disadvantages of patent protection for software versus copyright protection according to American law, followed by the positions of both sides.
3.6.1 Advantages of patenting software versus copyright protection
A. algorithm protection
The patent also provides protection for the algorithm underlying the software and not only for the manner or form of its expression in the software or on screens as copyright protection. In this way, the problem that arises in connection with the scope of copyright protection, which was described above, is avoided, and where this algorithm is a very valuable component of the software, such that it is innovative and special, but it can be expressed in a number of different ways, the patent protection is exclusive and very valuable, since it is possible that protection will not be possible Copyright before expressing the algorithm in another way.
B. Protection against independent development and prevention of competition
As mentioned, the patent grants a sort of monopoly over the field of invention, therefore even if an infringing product is developed separately, this does not constitute a defense against an infringement claim. It is also not necessary to prove actual copying in order to succeed in a claim, unlike a claim for copyright infringement.
third. Certainty regarding the scope of protection and no need to maintain confidentiality
Patent protection is granted to all the elements appearing in the application and there is no uncertainty regarding the scope of copyright protection; Since there is no uncertainty regarding the scope of protection, there is no need to maintain confidentiality and sign user authorizations on confidentiality agreements. This makes it easier to commercialize the software and distribute it.
Ease of enforcement and temporary remedies
Due to the elements mentioned above, enforcement of the protection is relatively easy. In the past, a patent owner was required to prove beyond any doubt the infringement of the patent in order to receive temporary relief (such as a temporary injunction). However, after the reform carried out in 1982 - one court constitutes the court of appeal for all areas of intellectual property (the US Court of Appeals for the Federal Circuit). This court ruled that the temporary remedies granted to a patent owner should be the same as those granted to another intellectual property owner.[4] As a result, he must prove the violation 'clearly', when the presumption of registration is in his favor, and the defendant has the burden of proof to show the invalidity of the registration and to show that the 'balance of convenience' is in his favor.
3.6.2 Disadvantages of patenting software versus copyright protection
A. Ambiguity regarding registrable software
There is still ambiguity regarding the type of software that can be registered as a patent under the "Statutory Subject Matter", that is, which software can be registered as "Processes" or as "Machines", and which cannot be registered (see above). This situation means that sometimes the acceptance or rejection of an application depends more on the 'cosmetic' details of the registration of the application than on its substance, and on the expertise of the patent editors who register it.
B. Long registration time
The protection is granted only from the date of registration onwards. Registration takes between several months and several years in the US, with the average registration time being about two years. Considering the short commercial life of most software, and the fact that it is not possible to receive compensation regarding the previous date of registration, this is a serious disadvantage compared to copyright protection that exists from the time of creation without the need for registration.
third. Relatively high registration cost
The cost of registration itself is also a disadvantage compared to copyright protection, especially for small companies, since it is about $2,000 for the government fees alone, without the fees of the patent editors and lawyers which can reach over $10,000.
d. Inapplicability to databases and documentation
Patent protection will not apply to software used as a basis for a database, nor to documentation accompanying the software.
God. Prohibition of creating a monopoly
A patent owner is subject to the prohibition of misuse of a patent, such as registering a patent to prevent the use of another only, and may be obliged to grant a license of use under reasonable conditions to prevent the formation of a monopoly.
3.6.3 The position of opponents to the granting of a patent for software
The growing trend of granting software patents has been strongly opposed by both lawyers and software professionals. The main concern of the opponents is that this trend will seriously harm the development of the dynamic and creative software industry, for the following reasons:
Fear of a monopoly or cartel by the big companies: granting ownership of the algorithms that form the basis of the software prevents any possibility of development and cross-fertilization between different software manufacturers. Opponents are mainly afraid of registering patents on elementary principles in programming, which will prevent other software manufacturers from using them without permission from the patent owner (and it is even claimed that this is similar to registering a patent on the first notes of Beethoven's symphony).
The fear is mainly from the takeover of large companies, which have the sums of money, the lawyers and the time needed on the software market by registering patents on every possible new software, while suppressing and suffocating the small software companies. This, for example, emerges from a press interview[5] Because the MICROSOFT company began already in 1989 to submit any new software as a matter of routine for registration at the Patent Office, in the Makhil for registration at the Copyright Office.
A state of uncertainty: Until now, the opponents claim, every author of software knew that he was its owner. From now on the situation is not clear since it is possible that the author of new software has violated an existing patent without knowing it, and he is expected to sue for infringement and provide compensation without having any knowledge of the infringement. This uncertainty is even strengthened by paying attention to the large number of applications that are in the stages of registration and the relatively long registration time.
Uncertainty also exists from the point of view of the patent applicant: a condition for registration is that the application must be novel. A patent based on information that has already been published anywhere and in any way in the world on the day of its publication will not be valid. For this purpose, it is sufficient for the opponent of the registration, even after the patent has already been registered, to prove that a user manual, an article or a source section in a professional newspaper, etc., was published in order to invalidate the patent. The patent applicant is practically unable to go through all of the said information due to the scope of the material in question, while the opponent of the registration has access to information proving that on the day the application was submitted, the algorithm and/or technique were already known and published because due to its use he is sued or opposes the registration.
Incompetence of the patent office personnel in examining applications for software registration: the decision on a software patent application requires extensive knowledge of computers and software, due to the fine distinctions required by law and rulings. The office personnel do not have such knowledge, so the fate of the applications depends to a large extent on the way the application is registered.
3.6.4 The position of those in favor of granting a patent for software
Those in favor of software patent registration among the jurists claim that an unjustified hysteria has arisen around the issue, because the strict registration conditions allow the registration of only software that constitutes useful and innovative inventive progress, as stated above, and that algorithms cannot be registered as such at all.
According to them, the monopoly guaranteed by the registration of the patent does not harm but actually encourages creativity in order to win the expected financial return. Also, the exclusivity and expected financial return will encourage investors outside the software industry to invest money in research and development.
The protection granted to all elements of the registration application and its full disclosure in the patent journal will put an end to the element of uncertainty regarding the scope of the protection granted to the software (does it also include the software diagrams, the shape of the screens, the interfaces, etc.) and will stop the atmosphere of suspicion and secrecy that characterizes the software industry, when secrets are often revealed the commercial ones after a while anyway.
As for the lack of skill of the patent office personnel, the proponents admit that this is a serious problem, but claim that as the patent office has trained itself to engage in other complicated technological areas (such as biochemistry and molecular chemistry), there is no stopping it from doing so in the software field as well. In connection with this, they note that the Patent Office has increased the number of people dealing with these applications and conducts training courses on the subject.
3.6.5. Summary
The decision between the parties is without a doubt complicated and difficult to solve, since the legal problems created in the protection of computer software and the rapid development of the industry do not find their full solution either in the protection of copyrights or in the protection of the patent, both of which were created for other purposes.
Since the solution of unique legislation (Sui Generis) for the protection of computer software was actually rejected, in our opinion copyright protection should be preferred over patent protection when it comes to the protection of the software itself, without being part of a process or general hardware.
This solution is also the solution chosen by the European community and constitutes the future protection of computer software in Europe. Although even in Europe it is possible under certain conditions to register a patent on software, the difference can still be made. Among the approaches in the US and Europe is to create difficulties and uncertainty among software companies and lawyers.
Despite the problems and the heated debate in the US, it seems that the expansion trend in software patenting there can only be stopped or regulated through congressional legislation. However, despite intentions to make changes and reform the copyright and patent laws, it is not clear when and how these changes will be made, which may only increase the general uncertainty.
[1] The full name of the treaty is Patent Cooperation Treaty. The treaty was signed in Washington in 1970, and amended in 1979 and 1984.
[2] SAH 510 148, p. 1538; SAH 402 XNUMX p. XNUMX. The issue of eligibility for invention in general and eligibility of computer software in particular for patent protection did not change following the amendment.
[3] The Patent Regulations (Implementation of the Convention Concerning Cooperation in Patent Matters), 1996-5757, KT 948, p. XNUMX.
[4] Atlas Powder Co. v. Ireco Chemicals, 773 F.2d 1230 (F. Cir. 1985).
[5] Businessweek, May 13 1991, p.64.
Link to the first part of the series
One response
Thank you very much for an enriching and interesting post
I will come back again.
Mor