Wednesday, May 16, 2012

Israel issues guidelines for software related inventions

201009 Israel 291
The Commissioner of the Israeli Patent Office has issued guidelines for examination of software-related inventions. These types of inventions are referred to by others as computer-implemented inventions or the slightly misleading term "software patents". The attorneys at Reinhold Cohn comment that 'the pendulum has swung once again in the right direction of far more permissive patentability criteria of software-related inventions'.

What's patentable

Any invention must satisfy a few criteria in order to be eligible for patent protection. It must be new, useful, susceptible to industrial application, involve an inventive step, and be appropriate subject matter .

This last test is expressed in Israel as whether the invention falls within a technological field. The guidelines refer to a requirement that a 'concrete technological process must occur' when executing the invention. A concrete technological process means:
expression of physical features in an object on which the invention is carried out, or in the nature of the operation carried out by the product or process (see the manner in which these were discussed by the European Enlarged Board of Appeal in the matter of G0003/08, decision dated 12.5.2010).
What's not patentable

The usual suspects are excluded. The guidelines note that:
[a] discovery, a scientific theory, a mathematical formula, rules for playing games, and mental acts, as such, will be considered as abstract ideas or processes that are devoid of technical character, irrespective of whether they are performed in a "manual" manner or by a computer.
Not all business method are excluded.  The guidelines state that:
business methods per se that belong to the economic world will not be considered as inventions in a technological field.
A technological character may nevertheless be crystallised by combining an abstract idea or process with additional technological means.

How will this apply to software-related inventions?

The guidelines provide some rules that may assist in applying the guidelines to the field of software-implemented inventions, noted as a field in which questions are often raised as to how to identify concrete technological character.

Beyond regular operation

One rule asseses whether carrying out the claimed invention has expression of modification in the physical features beyond the regular operation of an integrated computer system. If yes, then this indicates that the invention falls within a technological field.

Operating in a new manner

An invention can also fall within a technological field if carrying out the claimed invention causes the computer to operate in a new manner. A new manner includes improving the computer's performance. Performance includes speed, reliability, improved utilisation of data storage capacity.

Inter-operability of components

A further indicator of a technological field is if inter-operability is created between components of the computer system in a manner that did not exist beforehand.

Just a regular technical effect

In the situations set out above it is assumed that a concrete technological process will occur when the invention is executed. However, not all computer implementations will result in a concrete technological process.

For example, if the invention is implemented by a computer, and the operation of the computer does not add anything beyond the "regular" technical effect resulting from executing a computer program on a computer, then there would be no concrete technological character.

Automation of a process

Some inventions involve computer implementation of a process that can also be carried out without the assistance of a computer. These include automation of manual processes, processes for optimisation and processes for diagnostics. If such implementations exhibit a contribution beyond the obvious and clear efficiency in computerising a process then there may be reasonable basis for the existence of concrete technological character.

Putting this another way, in some cases the implementation of the invention using a computer is substantially different from the manual performance. For example, it might not be practical to perform the process efficiently using "manual" means. In other cases the implementation might have no significance apart from the context of the computerised process. These all point to the existence of concrete technological character.

Photo courtesy of author YoavShapira under Creative Commons licence.

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