The right to a patent is a territorial right subject to the legislative arrangements of each and every country, where each and every country has different standards for granting patents. These differences are especially true regarding software patents.
Once the software is created, it can be reproduced easily, at low cost, and in an unlimited number of copies. Although copyright protection is available for “literal expressions” of software, it does not protect the “idea” behind the software, which often forms a central part of its commercial value (for more details see this article regarding copyright in software). Since these ideas behind the software usually provide technical functions, such as machine control or data processing, software protection through the patent system is usually available to protect such technical functions.
While in some countries patents are granted for all types of software, in many countries software is not eligible to be registered as a patent. However, in many of those countries, only computer programming that is claimed “as is” is not eligible to be registered as a patent, and patent protection can be obtained for computer-related inventions that are of a technical nature. As part of the reasons for excluding software from patent protection, it was stated that innovation in this field usually involves incremental and continuous development and reuse of the work of others, and that the need to maintain interoperability between programming, systems and network components is not suitable for the mechanisms of the patent system because the variety of options available to the second developer may be limited. On the other hand, some argue that providing patent protection for computer programs is necessary in order to provide a proper incentive for investment in the field to support innovation in a number of technological fields that are developing along with computer technology (see for example: WIPO, “Computer programs and business models”, available at: https ://www.wipo.int/patents/en/topics/software.html.).
In this article we will examine the scope and essence of patent protection for computer software in Israel, Europe and the United States.
The nature and scope of patent rights on computer software in Israel
A patent is a kind of agreement between the public and the inventor, according to which the inventor will reveal his invention to the public, and in return will enjoy the right to exclusivity in his invention (monopoly) for a limited period of 20 years (in the case of medicines, sometimes 25 years). While the purpose of copyright is to encourage the creator to disclose his creation to consumers, patent law encourages the inventor to disclose his invention to his competitors. That is, the patent system is not only intended to encourage people to invent. It is designed to encourage people to reveal their inventions to their competitors so that they can use the inventions and compete with the inventors themselves.
When the need arose to protect computer software from copying, various legal methods turned to the field of copyright. Similarly, in Israel, computer software was granted the copyright protection granted to a literary work. Software, as its name implies, is mainly from the field of content, and therefore copyright protection is an appropriate protection for it. Also, due to the nature of the software, it is not appropriate to allow the creator’s competitors to copy it for a very long period of time, and on the other hand, it is appropriate to leave the ideas inherent in it open to all market competitors, which will ensure free competition in this market. The initial meaning of these things is that initially the approach was that software is not suitable for patent law. However, the question of the eligibility of software to be registered as a patent should be derived from the purposive interpretation of the patent laws.
Section 3 of the Patent Law states that an invention eligible to be registered as a patent can be a process or a product belonging to a technological field. Airy ideas, lacking tangible expression, cannot be registered as a patent. Computer programs mainly consist of algorithms and mathematical flow charts, which are considered ethereal ideas. Therefore, there is a difficulty in approving a patent in relation to computer software.
For an invention to be considered eligible for registration as a patent, whether it is claimed as a product or whether it is claimed as a process, it is required that a tangible technological process occurs in the performance of the invention, which means the manifestation of physical properties in something on which the invention is performed or in the nature of the operation that the product or process performs.
When a patent application is submitted for an invention in the field of software, it is not requested for the software itself. Therefore, the application does not specify the software, but rather the idea behind it. The applicant aims to prevent his competitors, at least for 20 years, from developing software that utilizes the same idea. That is why it is important to make sure that the invention itself will not be from the field of content but from some technological field.
Due to this, the demand for the existence of a tangible technological nature for the product or the process, or the result of the process, claimed in the inventions in the field of software, has developed. The “tangible technological nature” requirement means, as a rule, an expression of physical properties in something on which the invention is performed or in the nature of the operation that the product or process performs. The very idea of performing an action (control, creation, measurement, etc.) using a computer cannot be considered an invention in itself. The invention should also have a tangible technological character. That is, it must be checked whether the product of the performed operation or the method falls under the scope of an invention, even without the computing component (see for example: the decision of the Patent Authority regarding Biosense, Inc., Miami, Fla., U.S.A. v. Elbit Systems Ltd., Haifa Israel, opposition to requests Patent 126864, 125755, pp. 12-13, 15 (Nevo, 16.4.2009)).
In the Teicher matter (application for patent registration No. 171773 Teicher 26 (10.12.2012)) the Patent Authority explained that the change, or the potential for change, inherent in the technology related to the invention, will be a product that is the result of the execution of all the components of the invention. When examining the presence of technology and its potential to bring about the change of knowledge, referring to a component or part of the components of the invention separately from the other components tends to be artificial and may take things out of context. Therefore, in order to examine whether a product or process is an invention in a technological field, the invention must be examined as a whole without separating its components and without focusing on one component or one group of components. The aforementioned change refers to the state of knowledge in the professional field in which the invention was developed, which the patent applicant is obliged to detail (as stated in Section 20(a)(1) of the Patent Regulations (Procedures of the Authority, Procedures, Documents and Fees), 1968-1968). Hence, a change can be Identified as a contribution of the invention as a whole compared to the prior knowledge as it is subjectively identified by the patent applicant. This, in contrast to the research of the prior knowledge for the purposes of the question of inventive progress which is an objective test (see for example: CA 345/87 Hughes Aircraft company v. the State of Israel, p. “D Med(4) 45, 108-110 (1990); for this matter also: AA 4867/92 Sanitovsky v. Ta’ams Ltd., P.D. No(2) 509 (1996)).
Therefore, in order to examine whether an invention is in any technological field, it is necessary to examine whether the invention as a whole results in a contribution that has an actual expression in a technological field – that is the tangible technological character. The contribution of the invention as a whole will be examined in relation to the relevant prior knowledge as it essentially emerges from the detail.
In the matter of Digital Layers (application for patent no. 190125 Digital Layers Inc., on pp. 2, 9 and 10 (Nevo, 17.2.2014)), the Patent Authority clarified that an invention meets the requirement of “tangible technological character”, if it can be seen as causing an effect More technical when it is run on a computer, beyond normal physical results (electrical currents or normal interaction between hardware and software).
The different approaches regarding the protection of software through a patent
In the world there are several approaches regarding the eligibility of computer programming to be registered as a patent:
The American approach
In several countries, primarily the United States, there is a permissive approach regarding the registration of patents in the field of software. The US Patent Office and the United States legal system interpret and apply US patent law. These two independent and separate systems use different approaches when they apply the patent law to software inventions (the USPTO takes an administrative procedure based on a rule-making approach and the legal system in the United States interprets the patent law based on a rule-making approach of ‘case-by-case’).
The different policies of the two aforementioned bodies led to the fact that the patent granting procedures in the software field by the US Patent Office and by the courts were met with many criticisms. The main criticism is that the US Patent Office adopts a pro-patent policy that crosses the boundaries of patent eligibility in the software field, and leads to a large number of patents in the software field that are not valid (see in this regard, for example, the article by scholars Ren and Duprez criticizing the policy of the ” Pro-Patent”: X. Ren & R. Duprez, Financial Impact of Legal Practice on Software Patent Subject Matter Eligibility: Effectiveness of a Workable Standard, 30(1) THE. JOURNAL OF HIGH TECHNOLOGY MANAGEMENT RESEARCH, 1, 1-4 ( 2019)).
In contrast, the courts in the United States have encountered the opposite criticism, according to which they adopt an unclear and non-uniform policy regarding software patents. Several studies explain that this problem stems from the fact that the courts have no experience with new technologies, especially in the software industry, and this lack of experience leads to an incorrect and unclear interpretation in relation to patents in the software field (for this matter, see an article that provides results for an empirical study on judicial performance in the United States: “For example , a high reversal rate could indicate that nonspecialized district courts are simply unsuited to the often complex technological task of claim construction” (P. Wagner & L. Petherbridge, Is the Federal Circuit Succeeding? An Empirical Assessment of Judicial Performance, Faculty Scholarship at Penn Law 7, 1127 (2004))).
Section 101 of the US Patent Act (The Patents Act 1982, USC 35, Sec 101), states that anyone who invents or discovers a process, machine, manufacture or composition of matter which is new and useful, or a new and useful improvement of one of these, may receive in the patent, subject to the terms and requirements of this section.
According to American law, there are two criteria to determine whether an invention is eligible for registration as a patent: first, the invention must be included in one of the four statutory categories of inventions listed in Section 101 of the Act, namely, process, machine, manufacture or composition of matter; Second, the invention must be directed to patentable subject matter and not to a judicial exception. The judicial exceptions are subjects that the courts have found are not included in the four statutory categories of invention – abstract ideas, natural laws and natural phenomena (for this matter, see a publication on the USPTO website that explains the judicial exceptions, and gives examples of abstract ideas such as software or mathematical equations: 2014 Requirements of 35 USC 101 [R-10.2019] available at https://bit.ly/3f55ZAL).
The basic test that has developed over the years in the American jurisprudence regarding patents in the field of software is designed to check whether the software or application is a mathematical algorithm in itself, as opposed to an algorithm implemented as part of a functional complex. If so, then the software is not eligible for registration because it is not included in the scope of the areas listed above (following the ruling in the Diamond case, above, 103, and other rulings that adopted the aforementioned rule, the American Patent Office issued a guideline that adopts the rule: Manual of Patent Examining Procedure, 1983, Sec 2110: “Patentable Subject Matter – Mathematical Algorithms or Computer Programs”).
In the case of Alice (Alice Co v. CLS Bank International, 573 US 208 (SCt, 2014)), there was talk of a patent in the field of software relating to a method for reducing settlement risk. To solve this risk, use a computerized system as a third party intermediary between the parties to the transaction. The patent claims referred to a method built for managing financial obligations, a computer device arranged to perform the method, and a computer-readable means that includes software code for performing the method.
The Supreme Court ruled that the claims do not qualify for patent protection because they do not reveal anything significant beyond the application of an abstract idea. Furthermore, since the non-specific computer recited in the claims added nothing to the abstract idea, the other independent claims relating to computer systems and computer readable media are also considered ineligible for patent registration.
The Supreme Court established a two-step test to determine whether an invention is patentable under Section 101 of the US Code. First, it must be determined whether the claim is aimed at an abstract idea. If the answer is affirmative, the claims must be examined as a whole, and it must be determined whether, beyond the abstract idea, any additional feature in the claim is capable of turning the a priori abstract idea into a patent-eligible subject. That is, it must be checked if there is “anything extra” in the invention that can be considered as “inventive progress”.
Following the Alice ruling, the courts invalidated many computer-applied patents, interpreting them as abstract ideas.
In the case of Enfish, the Federal Court explained that the claims in question, which were interpreted as aimed at creating a self-referencing table, are not abstract. The court explained that a self-referencing table is a table in which the column definitions are stored in rows and thus allows for a faster search of information stored within the table. More efficient storage of information other than structured text in the table, and the absence of the need to create everything in the database as a separate table, allows the table to be defined on the fly. The court ruled that the patent claims are not abstract because they are aimed at a certain table which is a certain type of data structure designed to improve the way a computer stores data in memory, and therefore the claims are aimed at a specific improvement in the way computers operate (in the case of Enfish, the court explained that: “Accordingly, we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table” (Enfish v. Microsoft , 822 F3d 1327 (Fed Cir, 2016))).
That is, software-based inventions are eligible for patent protection in the United States, as long as it is not an abstract idea performed using standard computer operations.
The European approach
The conservative approach to registering patents in the field of software exists in several countries, primarily the European Patent Office (EPO – European Patent Office) is an organization in which 26 countries from Europe are members (as of January 1, 2021), this body manages part of the procedures for those countries the registration and examination of the patents).
Sections 2(b) and 3 of the European Patent Convention state that the defendant computer program “as such” (“computer programs as such”) is not eligible to be registered as a patent. However, according to the practice used by the European Patent Office, it is possible to register a patent for computer-implemented inventions if they provide a technical inventive contribution to the prior knowledge, regardless of whether they are implemented by hardware or software. Inventions are not patentable if they do not provide a technical contribution to the prior knowledge or if the contribution they provide is self-evident. That is, the examination of patent applications for software-based inventions includes two hurdles that are intertwined:
The first hurdle, fixed in Article 52 of the Convention, determines which types of inventions may be registered as patents (Patentable inventions). To pass this hurdle, the invention must meet the criteria of Article 52(1) of the Convention, which include the requirement to be an invention in a technological field, without falling into the exceptions of Article 52(2) of the Convention, which include discoveries, scientific theories and mathematical methods, aesthetic works as well as plans, rules and methods for performing thought processes, games or businesses, and software for computers (unlike the law in the United States that defines patentable inventions “positively” as any process, machine, production or composition of a new and useful material, or a new and useful improvement of one of these, European law defines the The requirements for innovation, inventive progress, and an invention that can be applied industrially, in a “negative” way. That is, what is not considered a patentable invention. S. 52 of the European Patent Convention includes an open list of things that are not considered a patentable invention).
According to the Examination Guide of the European Patent Office (Guidelines for Examination in the European Patent Office (March 2021 edition)), the starting point is that the items specified in Article 52(2) of the Convention are abstract or lack “technical character” and are therefore not eligible to be registered as a patent. This list must be read in conjunction with Article 52(3) of the Convention which qualifies it and excludes from patentability only inventions that relate to these items and activities per se. Therefore, a claim for computer software per se is not allowed, but an invention that incorporates or is based on computer software that is of a technical nature may be eligible to be registered as a patent.
Therefore, in order to get out of the scope of the exception in this section for an invention based on computer software, it must be shown that the invention has physical technical characteristics or that it solves a technical problem in the real world. Unfortunately, these elusive concepts have no clear definition.
Until the year 2000, the European Patent Office applied three concepts when evaluating the patentability of computer-related inventions: First, there must be a technical contribution (Vicom case) (Case T-208/84 (Vicom/Computer-Related Invention) 14 (15.7.1986 )); Second, in evaluating the technical contribution, the invention must be evaluated as a whole (Koch & Sterzel matter) (Koch & Sterzel/X-Ray Apparatus  EPOR 72); And third, the contribution must include an additional technical effect beyond the normal technical effect that exists when running software on a computer (IBM I case) (Case T-0935/97, IBM/Computer Programs (IBM II),  EPOR 301, 303).
In 2000, the member states adopted a new version of the European Patent Convention. Today, Section (1)52 of the European Patent Convention states that European patents will be granted for any invention, in any technological field, if it is new, has inventive progress and can be applied industrially (according to the wording of Section (1)52 of the European Patent Convention, a patent will be granted in Europe for: ” for any inventions, in all fields of technology, provided that they are new, involve an inventive step, and are susceptible of industrial application”.
Beginning in 2000, in a series of rulings, beginning with the PBS case, the EPO waived the technical contribution requirement as part of the analysis of Article 52 of the Convention.
In the case of PBS, the Appeals Committee interpreted Article 51(1) of the European Patent Convention and explained that although the requirement of technical nature is not explicitly stated in the Article, it derives inherently from the term “invention” as defined in the Convention. Therefore, the appeals committee determined that, the claim of the method is not considered an invention because it falls within the exception of Article 52(2)(c) of the Convention which refers to schemes or methods of doing business. It is therefore determined that a characteristic of a method concerning the use of technical means for a purely non-technical purpose or for the processing of purely non-technical information does not necessarily give such a method a technical character. However, the Appeals Committee determined that according to Article 52(1) of the Convention the claim of the device that implements the method is considered an invention even though the field is business, because the computer has the nature of a tangible device that is a physical entity. A patent claim directed at a physical entity places it in a formal category implying physical properties that could qualify as technical characteristics of an invention. Therefore, the use of a physical entity will exclude the invention from the scope of the exceptions in Articles 52(2) and 52(3) of the Convention (in the case of PBS, the appeals committee explained in its decision that: “[a] feature of a method which concerns the use of technical means for a purely nontechnical purpose and/or for processing purely non-technical information does not necessarily confer a technical character to such a method” (Case T-931/95, Controlling Pension Benefit Systems Partnership  OJEPO 441, 448)).
In the Microsoft case (Case T-424/03, Microsoft/Clipboard Formats I,  EPOR 414, 417), the Appeals Committee distinguished between a method implemented by means of a patent-eligible computer and software that is not eligible for registration as a patent. While a method implemented using a computer implements steps that are actually performed and achieves some effect and is therefore eligible for registration as a patent, programs only have the potential to achieve the effect when they are loaded into a computer and run on it and are therefore not eligible for registration as a patent.
Another significant development in the field occurred in 2009, when in a publication issued by the European Patent Office it was explained that it would not grant patents on computer software or on business methods implemented using a computer that do not make a technical contribution. The European Patent Office used the term “Computer-implemented inventions” to describe inventions that include the use of a computer, a computer network, or a programming device with features that are realized by computer software (for example, it was explained in the publication of the European Patent Office: Patents for software?, European law and practice, epo publication (2009)).
Currently, according to the approach of the European Patent Office, computer-implemented inventions qualify for registration as a patent if they provide an obvious technical solution to a technical problem, regardless of whether they are implemented by hardware or software (for more on this topic, see S.J. Marsnik & R.E. Thomas, Drawing a Line in the Patent Subject-Matter Sands: Does Europe Provide a Solution to the Software and Business Method Patent Problem?, 34 BC Int’l & Comp. L. Rev. 227, 277–278 (2011)).
Therefore, in patent claims submitted for registration in the European Union or one of its countries, we recommend emphasizing in detail how the invention causes an additional technical effect beyond the usual physical effects (such as the flow of electric current through a computer). It must be shown that the software has “technical” aspects such as the ability to cause a change in the physical sense or the technical function of technical characteristics or to reflect technical considerations required for the application of the invention.
(This article is based on the chapter “Software Patents” from my book “Patent Laws” published in 2023 by Perlstein Ginoser).