Patentability of Computer Software and Business Methods: Practical and Technical Issues (Topic 4)

1. Patentability of Computer Software and Business Methods: Practical and Technical Issues (Topic 4) Sub-Regional Seminar on Protection of Computer Software Mangalia August 25, 2010 Tomoko Miyamoto Head, Patent Law Section, Patents and Innovation Division, WIPO

2. Computer software • Computer software performs “functions” through “expressions” knowledge

3. Characteristics of knowledge • “Non-rival” Knowledge can be used simultaneously by many people • “Non-excludable” Once acquired, people can freely use the knowledge Free rider problem Patent system - Granting exclusive right  incentive to innovate - Duty to disclose inventions  promote sharing of knowledge

4. Computer software • Computer software performs “functions” through “expressions” • Software is a tool to implement a useful idea a core of an invention protected by patents

5. The patent system Patent office Patentee Exclusive right to prevent others from using, making etc. the patented invention without the patentee’s consent Patent applications Granted Patents Patent examination- Patentability req. - Patentable subject - Novelty - Inventive step - Industrial applicability/ Utility - Sufficient disclosure Third Parties Access to patent information

6. The patent system • Exclusive rights on an “idea” going beyond the expression • Registration system; “Claims” define the scope of protection • In theory, clear boundary of protection • In practice, the possibility of interpreting the claims • Complicated procedure to obtain patents • Territorial rights • Costs for obtaining and maintaining patentsex: 2 countries (JP, US) = $17,000 7 countries (JP, US, DE, FR, UK, CN, KR) = $60,000 • Time consuming examination pendency period: 32M (US); 45M (EPO)

7. Promote innovation Not all creations of our mind are patentable Exclusions from patentable subject matter • Fundamental principles should not be covered by the exclusive patent rights ex. Law of nature; Mathematical methods • Something that has not had a concrete application in the real world should not be patented ex. Abstract ideas; Mental acts Software can be a tool to implement… • mathematical methods (calculating the circular constants (pi)) • mental acts (playing a chess game) But software can also be a tool to implement … • concrete and tangible technical ideas

8. Computer software • Computer software performs “functions” through “expressions” • Software is a tool to implement a useful idea • “Functions” achievable only with hardware; But software can be “traded” without hardware

9. Software Hardware Hardware controlled by software (washing machine) Hardware the technical feature of which is characterized by software (computer with application software) Software embodied on a machine readable medium (application software on CD-ROM) Software through network (Interactive game software downloaded via the Internet) Reference: JPO web site

10. Patentability of business methods • Many business methods implemented by software • Similar issues can be identified with respect to business methods implemented by software (ex. e-financing, e-shopping)

11. Thank you Tomoko.miyamoto@wipo.int