Soft­ware patents may be valid

SA courts un­likely to take an ex­treme view on law

Finweek English Edition - - Spoor & fisher -

RE­CENT ME­DIA DE­BATE has cen­tred on whether soft­ware can be patented in South Africa, with some op­po­nents ar­gu­ing that un­der our law it can’t be. How­ever, Chris de Vil­liers, a part­ner at Spoor & Fisher, says that’s largely in­cor­rect and based on a mis­in­ter­pre­ta­tion of SA’s Patents Act.

The pa­tent sys­tem has been an en­gine for eco­nomic de­vel­op­ment world­wide. Re­stric­tions on the patentabil­ity of tech­nol­ogy – in its in­fancy 30 years ago, when the rel­e­vant SA leg­is­la­tion was drafted – may now no longer be ap­pro­pri­ate.

De Vil­liers, who spe­cialises in do­mes­tic and in­ter­na­tional pa­tent and de­sign mat­ters, ac­knowl­edges that Sec­tion 25(2) of the Patents Act does say: “A pro­gramme for a com­puter… shall not be an in­ven­tion for pur­poses of this Act.”

“That would ap­pear to ex­clude soft­ware from patentabil­ity. How­ever, Sec­tion 25(3) then goes on to state that ‘the pro­vi­sions of sub­sec­tion (2) shall pre­vent, only to the ex­tent which a pa­tent or an ap­pli­ca­tion for a pa­tent re­lates to that thing as such, any­thing from be­ing treated as an in­ven­tion for the pur­poses of this Act’.”

In other words, Sec­tion 25(3) qual­i­fies Sec­tion 25(2) and lim­its or qual­i­fies the patentabil­ity ex­clu­sion to a pro­gramme for a com­puter “as such”. “The mean­ing isn’t very clear and SA’s courts have not yet ruled on its mean­ing. But the sec­tions to­gether could be in­ter­preted as pre­clud­ing the patent­ing of ‘pure soft­ware’ or pro­gramme code, as op­posed to soft­ware-re­lated in­ven­tions in gen­eral.”

Sim­i­lar word­ing in Euro­pean leg­is­la­tion has re­sulted in ex­haus­tive anal­y­sis and nu­mer­ous de­ci­sions by the ap­peal boards of the Euro­pean Pa­tent Of­fice. In Europe, a soft­ware-re­lated in­ven­tion can be patented if it has “tech­ni­cal char­ac­ter” or pro­duces a “tech­ni­cal ef­fect”, sub­ject to the nor­mal tests of nov­elty and in­ven­tive­ness. A soft­ware-re­lated in­ven­tion can be patented in the US if it pro­duces “a use­ful, con­crete and tan­gi­ble re­sult”.

De Vil­liers says: “Most other coun­tries tend to take a po­si­tion sim­i­lar to the US or Europe. And in the ab­sence of ex­ist­ing SA case law we can ex­pect our courts to be guided by the Euro­pean approach.”

He says that de­spite claims by anti-soft­ware pa­tent ac­tivists, soft­ware patents are by no means nec­es­sar­ily in­valid, adding that it could be ar­gued that soft­ware com­pa­nies would be fool­ish not to ap­ply for patents un­til the po­si­tion is clar­i­fied, ei­ther by the courts or an amend­ment of the Patents Act. Most coun­tries al­low soft­ware-re­lated in­ven­tions to be patented to a greater or lesser ex­tent and there’s no rea­son to ex­pect SA to take a dif­fer­ent po­si­tion. “If soft­ware turned out to be en­tirely un­patentable in SA we’d be an ex­cep­tion to the global trend. And there’s no log­i­cal ba­sis to as­sume our courts would in­ter­pret the ex­ist­ing leg­is­la­tion in such an ex­treme way.”

SA pa­tent ap­pli­ca­tions aren’t ex­am­ined for nov­elty or non-ob­vi­ous­ness of the in­ven­tions they cover. De Vil­liers says that ap­plies to all pa­tent ap­pli­ca­tions and not just soft­ware ap­pli­ca­tions. Like many other de­vel­op­ing coun­tries, the SA Pa­tent Of­fice doesn’t have the re­sources to con­duct a com­pre­hen­sive tech­ni­cal and le­gal ex­am­i­na­tion of pa­tent ap­pli­ca­tions.

“There­fore, the onus is placed on a pa­tent ap­pli­cant to do the home­work nec­es­sary to en­sure that the pa­tent is valid and there’s no doubt that many patents are granted that are not valid. How­ever, a pa­ten­tee wouldn’t eas­ily be able to en­force an in­valid pa­tent and may be pe­nalised for try­ing to do so.”

For ex­am­ple, Sec­tion 68 of the Patents Act makes pro­vi­sion for the courts to take the con­duct of a pa­ten­tee into ac­count in a pa­tent in­fringe­ment case in sit­u­a­tions where the pa­ten­tee has tried to en­force an in­valid pa­tent.

He makes the point that as pa­tent of­fices in dif­fer­ent coun­tries ap­ply dif­fer­ent laws and prac­tices, and have dif­fer­ent stan­dards, it’s in­evitable that patents for a par­tic­u­lar in­ven­tion may be granted in some coun­tries and re­jected in oth­ers, even in the light of the same “prior art” doc­u­ments. So a pa­tent ex­am­iner in one coun­try may de­cide that an in­ven­tion is ob­vi­ous in the light of the ex­ist­ing state of the art, while an­other may feel that an in­ven­tive step has been taken,” ex­plains De Vil­liers.

The onus is placed on a pa­tent ap­pli­cant to do the home­work nec­es­sary to en­sure that the pa­tent is valid.

The is­sue of whether or not SA should in­tro­duce a pa­tent ex­am­i­na­tion sys­tem is a thorny one. Such a sys­tem would re­quire many highly trained and tech­ni­cally qual­i­fied pa­tent ex­am­in­ers to con­duct sub­stan­tive ex­am­i­na­tions of all SA pa­tent ap­pli­ca­tions, with the cor­re­spond­ing cost im­pli­ca­tions, he says. “A poor ex­am­i­na­tion may be worse than none at all, so that op­tion can’t be ap­proached in a cava­lier man­ner. But ex­am­i­na­tion could be out­sourced to a ma­jor pa­tent of­fice, though most ma­jor pa­tent of­fices are al­ready over­bur­dened.”

SA courts to be guided by Euro­pean approach. Chris de Vil­liers

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