More than half of the 176 countries in the world that grant patents permit the patenting of software-related inventions, at least to some degree. There is a worldwide trend in favor of adopting patent protection for software-related inventions. This trend accelerated following the adoption in 1994 of the TRIPS Agreement, which mandates member countries to provide patent protection for inventions in all fields of technology, but which stops short of mandatory patent protection for software per se.
The most widely followed doctrine governing the scope of patent protection for softwarerelated inventions is the "technical effects" doctrine that was first promulgated by the European Patent Office (EPO). This doctrine generally holds that software is patentable if the application of the software has a "technical effect." Thus, for example, software that controls the timing of an electronic engine is patentable under this doctrine, whereas software that detects and corrects contextual homophone errors (e.g., "there" to "their") may not be patentable.
The EPO law regarding patentability of software tends to be somewhat more liberal than the individual laws of some of the EPO member countries that conduct substantive examinations of applications on the merits. Thus, one desiring to patent a software-related invention in Europe may choose to file an EPO application designating the EPO countries in which protection is sought, rather than filing separate patent applications in individual EPO countries. An EPO application, after allowance, is then granted in force within the selected countries.
For each country, the exact nature of software patentability is a complicated question. Even in countries that are liberal in granting patents on computer software, certain limitations apply. For example, in the United States and Japan, software that affects a physical process may be patentable. If the software preempts a mathematical algorithm, however, it is not patentable.
Obtaining patent protection for any invention, including software, is relatively expensive. For each country in which patent protection is sought, the cost is typically several thousands of dollars in attorney fees, patent draftsman charges, and governmental fees. Why, then, would one seek patent protection for software rather than rely upon copyright protection? First, a patent is valid against everyone in that country who makes, uses or sells the patented invention, even if the infringer invented it independently. In the United States, a provisional patent application may be filed on a software-related invention to preserve priority of invention that may then be perfected as domestic and international patent rights. Second, while copyright law protects only the expression of an idea, patent law protects the underlying idea, provided the idea is within the statutory categories of patentable subject matter and is not so fundamental that it constitutes a law of nature. Thus, for example, under U.S. patent law a mathematical algorithm is not patentable if the patent claim preempts the entire algorithm, but may be patentable if it applies the algorithm to accomplish a specific technical purpose. Finally, because many software products are mass-marketed without a signed license agreement, the strong protection provided by patent laws is increasingly important.
Although patent protection for software is available in an increasingly greater number of countries, the manner in which software is claimed in a patent is not necessarily consistent. Some countries permit the practice of claiming a computer program stored on computerreadable media. When a computer program is claimed in this manner, the infringing article is the medium that contains the computer program. As a result, the patent holder can enforce the patent against publishers who place an infringing program on the media rather than being limited to enforcing the patent against end users of the infringing program. This type of claim is known as a Beauregard claim in the United States, and is more generally referred to as a program product claim.
Acceptance of and use of program product claims vary by national or supra-national patent office. In the United States, computer programs embodied in a tangible medium are patentable subject matter. The European Patent Office has for many years issued software patents that include program product claims, even though the European Patent Convention nominally excludes computer programs and business methods from the statutory definition of "patentable inventions." The Japanese Patent Office also issues software patents that include program product claims. However, reliance on program product claims in Japan has decreased due to the strengthening of patent protection available for software in general through issuance of patents with claims to the computer programs themselves, rather than just to computer programs stored on computer-readable media.
In summary, there seems to be a general trend toward acceptance of the use of program product claims in providing software patent protection. With the United States Patent and Trademark Office, the European Patent Office, and the Japanese Patent Office all issuing patents that include program product claims, there is an increasing likelihood that patent offices in other countries will eventually follow suit in accepting the use of such claims.
Most of the industrialized nations of the world adhere to the Paris Convention for the Protection of Industrial Property. The most notable exception is Taiwan. This treaty provides that one who files a patent application in any of the member countries has up to one year to file subsequent applications in other member countries with the retrospective benefit of the first filing date of the first-filed patent application as the effective filing date of the subsequent applications. For example, one could file a patent application in the United States on June 1, 2007, then file corresponding applications in the United Kingdom, Japan and Canada up until June 1, 2008, with effective filing dates in the United Kingdom, Japan and Canada of June 1, 2007. Such priority of filing date is important because public disclosures of an invention (whether by the inventor or by somebody else) that occur between June 1, 2007, and June 1, 2008, will not have an adverse effect upon the U.K., Japanese and Canadian applications. Such public disclosures would destroy novelty of the invention at the later filing date, which would bar applications in these countries if the provisions of the Paris Convention could not be invoked. In addition, the priority of filing date also establishes the first to file as a critical timing factor, in most countries, in determining which of two or more competing applicants will be awarded the patent. Nationals of countries that are not members of the Paris Convention might be allowed to file patent applications in certain countries only under terms and conditions of bilateral treaties in force, such as bilateral treaties in force between Taiwan and the United States, and not otherwise.
A current list of Paris Convention member countries is available at WIPO website.
The European Patent Convention is the treaty that established the European Patent Organization (EPO). Thirty two direct countries plus five extension countries can be designated via the EPO. In each of those countries, one can apply for a patent via either the national route or the EPO route. The EPO grants patents that are valid in those member countries designated in the EPO application and subsequently perfected in those countries. Enforcement of the EPO patent is obtained through the national courts of the various countries.
A current list of EPO member countries is available on the EPO Web site.
The Eurasian Patent Convention is the treaty that established the Eurasian Patent Organization (EAPO). All of the member countries of the Eurasian Patent Convention are republics of the former Union of Soviet Socialist Republics. The main purpose of the Eurasian Patent Convention, which operates in much the same way as the European Patent Convention, is to create a regional system of legal protection for inventions on the basis of a common Eurasian patent covering the territory of all the member countries. As in the EPO, an applicant may apply for a patent via either the national route or the Eurasian Patent Organization route, and the EAPO grants patents that are valid in those member countries designated in the EAPO application and subsequently perfected in those countries. Enforcement of the EAPO patent is obtained through the national courts of the various countries.
A current list of Eurasian Patent Convention member countries is available on the EAPO Web site.
The Patent Cooperation Treaty (PCT) facilitates filing patent applications simultaneously in more than 130 countries. The major value of the PCT is to enable one to defer normal filing and translation deadlines and costs in PCT countries beyond the country in which the first patent application is filed for up to an additional eighteen months beyond the twelve months provided by the Paris Convention. This extra time can be critical for evaluating the results of the patent prosecution in a first-filed country. If the prosecution does not go well or the product in which the invention is embodied is not commercially viable, the subsequent foreign patent applications can be stopped, thereby avoiding additional expenses.
A current list of PCT member countries is available on the WIPO Web site.
The African Regional Industrial Property Organization (ARIPO) is a central filing system for patents and trademarks comprised of fifteen African countries. The ARIPO's objectives are to promote, harmonize and develop the industrial property systems in the region. Registration of patents and industrial designs is governed by the Harare Protocol, while registration of trademarks is governed by the Banjul Protocol. Most countries with membership in the Harare Protocol are also members of the PCT. Further, most PCT member countries that are also parties to the Harare Protocol can be designated either for a national or an ARIPO patent, or both a national and a ARIPO patent.
A current list of ARIPO member countries is available on the ARIPO Web site.
The African Intellectual Property Organization (AIPO or OAPI) provides for centralized protection of intellectual property rights in sixteen African countries. Objectives of the AIPO include protection and publication of intellectual property, attracting private investment by creating a legal framework for effective protection of intellectual property, and encouraging creativity and transfer of technology. Intellectual property protection obtained from AIPO is valid throughout all AIPO member countries without further validation or confirmation in the various member countries being required. Laws governing the AIPO are found in the Bangui Agreement of 1977, with appendices covering patents, registered patterns, trademarks, industrial designs and models, trade names, captions and copyrights.
A current list of AIPO member countries is available on the OAPI Web site.
