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26 May 2016PatentsSarah Matheson

AIPPI: Moving away from technological neutrality

One of the roles of the International Association for the Protection of Intellectual Property (AIPPI) is conducting studies of existing laws and proposing measures to achieve harmonisation on an international basis. These studies may be conducted by its international standing committees, whose role it is to monitor and comment on matters relevant to their respective terms of reference.

AIPPI’s standing committee on information technology (IT) and the internet has produced a timely and important report on the current situation around the world on the protection of computer-implemented inventions (CIIs).

Why is this report timely? While the patentability of computer software-related inventions has been the subject of debate among intellectual property users and IT experts for many years, patent-eligible subject matter more generally is currently one of the most vexed issues of patent law across a number of jurisdictions and technologies.

Notwithstanding that article 27 of the TRIPS Agreement provides that patents shall be available for any inventions in all fields of technology (provided they are new, involve an inventive step and are capable of industrial application), a similar debate exists with regard to biotechnology. These debates reach well beyond the TRIPS exclusions based on public order or morality; diagnostic, therapeutic and surgical methods; and plants and animals.

This report is important because, as it explains, the economies of industrialised countries are increasingly dependent on working methods across almost all fields of technology being implemented through the use of computer networks. Patent protection for CIIs is therefore a critical business issue.

The report canvasses the current position in the US, Japan, Europe (including Germany and the UK), China, Canada, Australia and New Zealand. Despite the TRIPS-mandated approach to ‘technology-neutral’ patentability, the report demonstrates that many of these jurisdictions have moved towards technology-specific policy and legislation.

In the US, the 2014 Supreme Court decision in Alice Corporation v CLS Bank struck down all claims at issue which were variously related to a method for exchanging financial obligations. The court introduced a new two-step analysis for determining patent-eligible subject matter. Drawing extensively on recent Supreme Court and US Court of Appeals for the Federal Circuit decisions, the court held that the claims were drawn to an ineligible concept or abstract idea, and the mere recitation of a generic computer did not transform that patent-ineligible abstract idea.

In Japan, patent office examination guidelines for software-related inventions require that unless the invention is controlling an apparatus (eg, an engine), a claim to a software-related invention must describe software and hardware resources working in a cooperative manner. Assuming this threshold, the examination guidelines provide a number of examples which will usually not involve an inventive step, such as implementation by software of functions that were implemented by hardware in the prior art and systematisation of transactions which were performed by humans in the prior art.

"technology-specific provisions can generally be circumvented in ways which mean they do not achieve their purpose but rather add complexity to the system."

In Europe, the starting point is article 52 of the European Patent Convention, which provides that, among other things, methods for doing business and programs for computers shall not be regarded as inventions. However, a premise that an invention must have a technical character has provided case law and guidelines for examination the interpretation of which make it possible to draft claims which take many CIIs outside this exclusion. The claimed subject matter should have a technical character and show a technical effect in the sense of going beyond the normal interaction between hardware and software.

In China, the examination guidelines of the State Intellectual Property Office set up “special requirements for examining computer program-related invention applications”, essentially by defining the situations in which the solution relating to a computer program is a technical solution. Similar to the requirements in Europe, an invention must have a technical character, requiring satisfaction of three elements: solving a technical problem, employing technical means and achieving a technical result.

In Canada, under recent practice notes issued by the Canadian Intellectual Property Office, CIIs are generally considered patent-ineligible if they are directed to a solution of a computer problem, being a problem with the operation of a computer as opposed to a problem the solution to which may be implemented using a computer.

In Australia, two recent decisions of the Full Federal Court have rejected claims to CIIs as patent-ineligible, each on the basis that they were nothing more than a scheme or business method that happened to be computer-implemented. The present state of the law in Australia appears to be that if the claims and the description indicate that the involvement of a computer is inextricably linked with the invention, or an invention can be seen as providing an improvement in computer technology or a “new use of the computer”, the claims may be considered to constitute patent-eligible subject matter.

However, at the end of April, a draft report of the Productivity Commission (which is conducting an enquiry into Australia’s IP systems) recommended that the Patents Act be amended to explicitly exclude business methods and software from being patentable subject matter. If implemented, this would complete the transformation of Australian law from one that has traditionally provided a very broad and flexible approach to patentable subject matter, allowing adaptation to new technologies, to a very restrictive environment, at least for CIIs.

New Zealand patent law traditionally closely followed Australian law with regard to patentable subject matter, including the patentability of CIIs and software. However, the new Patents Act aligns New Zealand patent law more closely with that of European and UK law in relation to CIIs, providing that a computer program is not an invention. A claim will relate to a computer program if the contribution made by the alleged invention lies solely in it being a computer program.

These country chapters suggest that any harmonisation of the position in relation to CIIs in these jurisdictions is harmonisation trending away from technological neutrality. It has to be questioned whether this is desirable in an environment where technology is rapidly outdated and technology-specific provisions can generally be circumvented in ways which mean they do not achieve their purpose but rather add complexity to the system, as the above example of Europe demonstrates.

In circumstances where the fundamental requirements of novelty, inventive step and industrial applicability are maintained, the report sensibly cautions against a view that recognition of patentability for CIIs open the floodgates to patents for CIIs.

Sarah Matheson is the reporter general at AIPPI. She advises in contentious and non-contentious IP matters. She is a patent litigator with a focus on acting for multinationals, and is also a registered trademark attorney. Matheson is a member of the Intellectual Property Society of Australia and New Zealand. She can be contacted at: sarah.matheson@allens.com.au

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