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Software Patents in European, US and Turkish Jurisdictions

14 February, 2020

Software, is a collection of data instructions that allow the computer to function and perform the commanded task. While the term itself is a collection of computer programs, libraries and any related data, software is often used identical to computer programs. In some jurisdictions, the term ‘computer program’ is used, to indicate its functionality. (Often categorized with application and system software). The components of the software are codes, which a programmer can write as source code in the programming language and derive into machine code via compliers/assemblers or interpreters. The methods for problem solving (calculation/manipulation) via coding is defined as algorithm. Algorithms are the functional elements of computer programs that may be subject to patent protection if patentability machine (object) codes are only written expressions in the programming language and are only subject to copyright protection against copying, if the code has been written in a tangible form. Algorithms ‘as such’[1] may not be patentable subject matter, therefore the main strategy to obtain patent protection of the software is to protect the algorithm against independent developments within the duration of patent protection.

European and US Software Patentability Requirements

The European Patent Office (‘EPO’) formed under European Patent Convention (‘EPC’) defines the patentability of computer programs under Art.52(2-c), which are excluded from patentability along with business methods ‘as such’. This ambiguous term has been clarified with the European Case law (from the EPO Technical Boards of Appeal (‘The Board’) to prevent innovative backslash in Europe against software implementation to emerging technologies, in contrast to the liberal US software patentability approach. Concerning Art.52 patentability requirements, the Board’s T 0931/95 Pension Benefit System (PBS), Decision became the turning point for software patentability in Europe.

The Board, in brief, decided that technical considerations is a necessary component of patentable subject-matter even if the method is concerned with economic applications. The applicant’s model had the technical character to fulfill the Art. 52(1) EPC requirement. The PBS decision was the first step to identify software-implemented applications as patentable subject-matter.[2]

It has to be made clear that the question of patentability under Art. 52(2) EPC should be decided separately from the question of novelty and inventive step. The question of patentability is concerned with technical considerations regarding the subject-matter or whether a technical solution to an objective technical problem is made.[3] The PBS Doctrine, alongside the Hitachi[4] decision that separated Art.52 and Art.56 EPC (inventive step) considerations, was confirmed with the Amended EPO Examination Guidelines(G 03/08) which required ‘further technical effect’[5] that is a not a material limitation of the scope of patentable subject matter, but against questionably drafted claims. Therefore the ‘further’ technical effect requirement under Art. 52(1) EPC became a prima facie test for patentable-subject matter, that can be known in the prior art[6] but has to fulfill the technical effect.

With these amendments, EPO began to analyze software implemented inventions similar to US Patent Office (‘USPTO’). However, the EPO approach is still focused on technical character, whereas the USPTO patent politics tend to allow software-implemented product and process patents, if they have the functional elements and practical applicability.[7]  The result of this liberal patent policymaking allowed a larger amount of software patents to be obtained within US market and investment to the software-implemented inventions.

Turkish Jurisdiction and Software Patent Applications

Like the European legislation and as an EPO Member State since 2000, any non-technical methods for compilation, distribution and presentation are non-patentable subject matter under Turkish Industrial Property Law (IPL) Art. 82(2).[8] The article directly addresses computer programs (IPL Art.82 (2-c)) as non-patentable subject matter and the phrasing used in the IPL is almost identical to Art. 52(2) EPC. The methodology used for software patentability follows the EPO practice and if further technical effects are to be found in the applicant’s invention, the patent application will be granted as computer-implemented invention from the Turkish Patent and Trademark Office (TPTO). Alternatively, a European Patent, obtained from EPO can be submitted to the TPTO for protection in Turkey, if the European Patent application has already covered the country. This is especially important, in general, for prior art search, as IPL Art.83 (2-b) states that European Patents with international application (‘Euro-PCT’) are considered as prior art, if the national application is submitted after the Euro-PCT resulting with the refusal of the patent application for not being a novel invention (Art.54 (1) (2)).

Conclusion

As seen in the two different patent protection approaches, there is still no unilateral approach for software patentability under international law. There are still vivid discussions on cost/benefit analysis of software patentability and whether the patent can bear innovation and application costs of the potential technology.[9] The financial success is highly dependent on the market structure and the algorithms lifetime within the market and cannot be foreseen from obtaining a software patent. Nevertheless many new inventions, under emerging technologies category, are based on software implementation or digitalization of previous technology that will require patent applications for protecting functional elements of the software.

[1] Referring to the European Patent Convention (EPC) Art. 52/2-c and Art. 52/3. Computer programs ‘as such’ are non-patentable subject matter anda re not regarded as inventions.

[2] Daşbaşı ,Bayram, ‘Bilgisayar Buluşlarının ve İş Metodlarının Patentlenebilirliği: Dünya’daki Uygulamalar ve Ülkemizdeki Durum’ (uzmanlık tezi), T.C Türk Patent Enstitüsü Patent Dairesi Başkanlığı (2013) 84

[3] Hacon, Richard and Pagenberg, Jochen(eds),  Concise European Patent Law, Kluwer Law International (2007) 31

[4] Case T258/03

[5] An effect which goes beyond the ‘normal’ physical interactions between the program( software) and computer(hardware) which it runs

[6] Prior Art Test is a separate method under Art.56 EPC for inventive step’ requirement

[7] Daşbaşı (n.2) 33 ; USPTO Examination Guidelines for Computer-Related Inventions (1996)

[8] Suluk (Karasu/Nal), Fikri Mülkiyet Hukuku, Seçkin Yayınevi 3. Bası (2019) 243

[9] Dalyan, Şener, Bilgisayar Programlarının Fikri Hukukta Korunması, Seçkin Yayınları (2009) 47-48

 

Author: Sinan Erkan

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