(B) Software Patents

247 A similar discussion concerning patentable subject matter has occurred in respect of software patents, as the significance of software itself extends well beyond the software industry. As mentioned above, the TRIPS Agreement (Article 27.1) does not allow the exclusion of software in general from patentability.³⁶⁶ In addition to the question as to whether computer programs as such should be regarded as “inventions” under the patent law, this broad scope of patentability has prompted a discussion on the subject of where to draw the line between copyright and patent law protection for computer programs. A Fédération Internationale des Conseils en Propriété Industrielle (FICPI) review of international patent protection of software, e-commerce and business methods,³⁶⁷ for example, found that generally countries in Europe as well as South Africa explicitly exclude computer programs as such from protection under their patent laws, while Australia, Canada, Chile, Israel, Japan,³⁶⁸ the Republic of Korea and the United States of America do not exclude such protection. The same countries, with the exclusion of Chile, also do not exclude granting patent protection to business method as such. Although some patent offices have established examination guidelines for computer related inventions, including software related inventions, very little international harmonization has been achieved in this area.³⁶⁹

248 In the field of information technology, the value of intellectual assets often resides in the ‘content’ of the information. In the past, software has often been sold as an integral part of the computer system, while, today, software products are often marketed in the form of computer readable media, for example, diskettes and CD-ROMs or directly over the Internet.

Software-related inventions are thus stored in such media, and commercialized separately from the computer hardware. It is necessary, therefore, to claim such software-related inventions as a computer readable medium storing the software that performs the claimed functions. This type of claim is commonly called “Beauregard-type claim.”³⁷⁰ Other types of claims, such as

“Lowry-type claim” (a computer readable medium storing a data structure, which data structure is interrelated to the medium structurally and functionally)³⁷¹ or a “propagated signal claim” (a claim to a computer data signal that is embodied in a carrier wave)³⁷² have also been advanced by practitioners. As this topic is relatively new, there is not as yet international harmonization concerning an acceptable claim format with respect to software-related inventions.

249 In Europe, the European Commission issued a proposal for a Directive on the protection by patents of computer-implemented inventions in February 2002.³⁷³ While inventions using software can already be patented through the European Patent Office (EPO), or national patent offices, implementation of the conditions for patentability vary, and so the Directive is designed to harmonize the way in which national patent laws deal with software inventions. In particular, the proposal provides that, in order to meet the requirement of inventive step, as is the case with inventions in general, a computer-implemented invention must make a technical contribution to the state of the art. European cases in which a “technical contribution” has been found include an invention to increase computer processing speeds, and an invention by which an X-ray machine was controlled by a data processing unit. Further, the proposal does not follow the practice of the EPO in permitting claims to computer program products either on their own or on a carrier, as this could be seen as allowing patents for computer programs “as such”.³⁷⁴