Page 36 - EngineerIT October 2022

FROM A LEGAL POINT OF VIEW

Ensuring intellectual property rights

for computer implemented inventions

By Lance Abramson, Partner, Spoor & Fisher

he patenting of computer implemented inventions (software) is a fascinating area
of intellectual property law that is constantly changing. Why is this and how did
Twe get here?
The forerunner to modern software was punch cards, with each hole in the punch
card representing computer data and instructions. This led early legislators to include
punch cards under copyright law and exclude these from patent law. After all, the punch
card (software) was well protected if you couldn’t copy the layout of the holes in the
punch cards.
As software developed into the modern era, it quickly became apparent for software
developers that copyright law was not adequate protection for their software as the
software could often relatively easily be rewritten in another language, for example, and the
copyright protection avoided.
What ensued has been an often heated debate between two camps - to include
software under the umbrella of patent law or not. The first view is that software should not Lance Abramson
be treated any differently to other forms of technology and should be fully patentable as
long as it is new and inventive. The second view is that allowing the patenting of computer you should not assume the software is
software stifles innovation. not patentable but rather contact a patent
In effect what has happened is that the law around patenting of software in various attorney who is an expert in this field.
countries has developed differently, with two main approaches having been developed. In South Africa, patents are not
One approach allows software to be patented as long as the functionality implemented examined at the time of filing and are
by the software is new and inventive. This approach reflects the view that software should only examined if the patent is enforced
not be treated differently to any other form of technology. An example of this might be or challenged. Additionally, a patent
a new and inventive business method that is implemented in software which would be application cannot be filed for software
patentable in some countries. that is already released into the public
Another approach, and more widespread, is that software can only be patented if the domain. This means software developers
software provides a technical effect, or put another way, provides a technical solution to a cannot wait for the first court case to be
technical problem. Some examples of such “technical effect” software would be software heard and then decide if they want to file
that speeds up data transmission or software that compresses data for better storage. for patent protection for their software.
In these countries, the example above of a new and inventive business method that is Rather, if they do want patent protection,
implemented in software would not be patentable. they must file a patent application before
The landscape is constantly so changeable that even last month, the High Court of they disclose their invention. The patent
Australia, which is that country’s highest court, issued a split decision on the patenting application will then be granted and
of a computer software invention. Three of the judges found a patent covering a gaming the validity of the patent will only be
machine, including hardware and software, was patentable, and three of the judges found determined at some point in the future
the patent invalid based on the question relating to the patenting of computer software! when our courts issue their first decision
In South Africa, we too have a unique position. Our Patents Act in Section 25(2)(e) on this point. n
excludes software from patentability, but this is qualified by Section 25(3) which effectively
states that the exclusion applies only to the extent to which the invention relates to that
subject matter as such. About Spoor & Fisher
At present, there is no case law in South Africa interpreting the meaning of these Spoor & Fisher is Africa’s largest
specialised intellectual property law firm,
sections and so we find ourselves in a grey area regarding what kind of software is with African roots and global reach. The
patentable in South Africa. firm specialises in all aspects of IP law,
including trademarks, copyright, patents,
So where does that leave software developers? registered designs, anti-counterfeiting,
As this area of patent law is complex and continually changing, the best advice for software commercial work with an IP flavour, and
litigation in these fields. www.spoor.com
developers is that if you have developed software that you believe is new and inventive,

EngineerIT | October 2022 | 34