Software patents may be valid
SA courts unlikely to take an extreme view on law
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