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Software Patentability

It would be an exaggeration to talk about rivers of ink, but certainly much has been written and said about software patentability. Contradictory news about the posture of the European Parliament and the practices of the European Patent Office have contributed to creating a certain amount of confusion -particularly among SMEs-, which we will humbly try to clarify.
Without complicating the matter too much, as we have limited space here, we will try to shed some light on the controversial issue of software patentability. Article 52, paragraph 2 of the European Patent Convention establishes that programs for computers are not patentable. However, it then goes on to say: “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 application or European patent relates to such subject-matter or activities as such”.

It is the expression “as such” that is the object of controversy or interpretation, and although it is true that in its session of 6 June 2005 the European Parliament excluded the patentability of programs, it is also true that the Technical Board of Appeal of the European Patent Office interprets that:

“a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the “normal” physical interactions between the program and the computer on which it is run”.

We are talking about the technical effect brought about by a program, not about the program itself, as such. The technical effect that a program brings about or is capable of bringing about is patentable, and therefore programs that do not have a technical character are not patentable. Such programs would not be patentable, but programs that have a technical effect, as well as being new inventions, involving an inventive step and having an industrial application, would be patentable.

However, it can be argued that any program that brings about any type of technical effect produces an interaction with the machine in the form of electric currents and this would make all programs patentable. For this reason it has been established that the technical effect must go beyond the normal effect produced by running any program.

What do we understand by “technical effect”? No precise definition has been established for this case, although an approximate one has been reached through solutions to specific situations. According to the patent examiners, we can simplify it by saying that a further technical effect that goes beyond the normal effect occurs when a physical magnitude (speed, temperature, time, luminosity, space, etc.) is modified, and we can find a solution to each case through specific examples.

For example, it is not a matter of the invention saving the user time, even though that is useful (a program for calculating salaries that can handle different incidents), but of saving the machine time -and consequently the user- (a program capable of identifying the owner of any vehicle in the world in a tenth of a second from its registration number). In this case it would be the effect by which such immediacy is achieved that would be patentable. It is the effect of how the machine manages to search for and supply the information that is patented.

We are therefore not talking about patenting source codes, but the technical effect that is executed. It may be the case that the same code can bring about effects other than those claimed and can therefore be used by third parties for different purposes without infringing the patent. It would be different from the Copyright point of view, but lets not complicate the matter.

In practice, almost all software that is created and used in industry these days has a technical effect and would therefore be patentable. It is good for SMEs to know this -large companies already know about it- so that they can improve their competitiveness by making use of new ways of protecting the knowledge that they generate. Thus, in addition to the conventional -and often impractical- protection provided by the Intellectual Property Act, we have the protection deriving from the Patent Act, and it is the strategy of each company, perhaps advised by experts, that determines the best type of protection in each case.

Carmen Sánchez-Puelles