Today’s modern society relies heavily on information technology wherein, software and hardware work in tandem. In this new digital market, innovative software and business method models are integral to the success of several companies such as LinkedIn and Uber. Therefore, IP protection of software is crucial not only for the IT industry but for other businesses as well.

In the new digital economy, it is often unclear whether the important software and business method inventions can be patented or not. This uncertainty is largely due to a legal rule originated from the famous U.S. Supreme Court case, ‘Alice Corporation v. CLS Bank International’, decided in June 2014, stating that ‘abstract ideas’ are not eligible for patent protection. The primary rationale behind the rule is a concern over so-called “preemption” of abstract ideas i.e. abstract ideas are the basic building blocks of science and technology, and allowing patents for abstract ideas can pre-empt the use of such basic building blocks.

In its landmark 2014 decision regarding Alice corporation, the US Supreme Court put forth a two-step framework test to determine the patentability of software invention that are not accompanied by a defined “abstract”. Initially the claims of a patent are examined for any underlying abstract idea. If the answer is “no”, the claims are eligible to be patented.  If an abstract idea supports the claims, the patent is examined for a more substantial presentation of the result through the claims than that reflected by an abstract idea. This two-part test is a capstone to the earlier Court’s decisions in Bilski v. Kappos (2010) and Prometheus v. Mayo (2012).

In US, Alice decision has set a legal precedent which will change the future of software industry. Prior to the Alice case decision, software patents could be written and awarded without considering whether a subject matter was patentable. Subsequent to the Alice case, the ability to obtain patent protection for computer-implemented inventions was heavily curtailed as USPTO and US courts examined these software patents with an iron fist. The USPTO has issued Alice rejections where no previous 101 patent eligibility rejection stood, and has even withdrawn notices of allowance after the issue fee has been paid.

Now USPTO demands for a proof of an inventive concept ahead of an abstract idea in order to grant a patent for an IT/software invention. There must be evidence of new hardware integration and not simply a conventional hardware or generic computer technology for a software invention to be considered eligible for obtaining a patent status. In the event of an evident lack of any hardware tool, the method and manufacture claims will be classified as invalid and hence the patent grant denied.

In today’s age and time, identification of eligible subject matter for patent protection has become a matter of key concern in arena of patent law.

So compared to US patent law post-Alice, where does the European and Asian software patent eligibility laws stand?

Software Patentability in Europe

The patenting of software invention seems easier in Europe despite the existence of an express provision on the excludability of software.

European Patent Convention Article 52 exclude certain subject matter form patent eligibility including ‘programs for computers’, but this exclusion from patentability only applies to the extent to which a European patent application relates to a computer program as such. However, any invention that makes a non-obvious ‘technical contribution’ or solves a ‘technical problem’ in a non-obvious way is patentable even if that technical problem is solved by running a computer program.

Both United Kingdom patent law and France patent legislation are interpreted to have the same effect as the European Patent Convention such that ‘programs for computers’ are excluded from patentability to the extent that a patent application relates to a computer program “as such”.

In contrast, the German Parliament in April 2013 adopted a joint motion against the growing trend of patent offices to grant patents on software programs.

Software Patentability in Asian Countries

In most of the Asian countries, the patenting of software is prohibited, as such, but they allow it when the claims recite the use of software working in concert with specific hardware, particularly when the invention resolves a technical problem and achieves a technical result.

In China, rules and methods for mental activities are not patentable, so a claim that describes an algorithm, mathematical rules, or computer program as such may not be patented. However, software that uses a technical solution to solve a technical problem concerning a law of nature may comprise patent eligible subject matter. Again to make the condition of patentability obscure, the guidelines fail to define technical solutions and problems. Furthermore, it is unclear whether the technical aspects, on their own, are required to satisfy the novel, non-obvious and useful requirements.

Korea’s Patent Act explains that a computer program alone is un-patentable. However, where the claim recites a program that is recorded on a storage medium, sufficiently tied to particular hardware and the combination of software and hardware achieves a technical outcome, it may comprise patent eligible subject matter.

Japan’s Patent Act defines a patentable invention as any highly-advanced creation of technical ideas utilizing laws of nature. Japan’s examination guidelines explain that any software that processes information by means of a computer is deemed to utilize laws of nature. However, this requirement is typically met by ‘concretely realizing the information processing performed by the software by using hardware resources’. The software may be patented as a method or article, including the storage medium, so long as the claim recites software and hardware working in concert.

India Patent Act has recently (Feb 2016) revised guidelines for computer-related inventions wherein it clearly prohibits the patenting of software per se under Section 3. However, software can be patented in the form of ‘computer related inventions’.

Conclusion

Software patent is one of the most contentious matters in IPR worldwide, especially in the United States. The odds are still very much against the companies trying to patent their software and to assert their software-related patents. Patentees will be less likely to sue for infringement, and those who do get sued will have a clear avenue of defense. It is thus important to understand the current case laws in the different jurisdiction in order to properly advocate for patent subject matter eligibility.

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