Software Patents May Well Be Valid
Recently, a number of articles have appeared in the media on the subject of so-called software patents. While some commentators are in favour of software being patentable and others are vehemently opposed, a common thread is the assumption that software is not patentable in South Africa. This is largely incorrect, and is based on an uncritical reading of the South African Patents Act.
Section 25(2) of the Patents Act does indeed say, amongst other things, that "a program for a computer… shall not be an invention for purposes of this Act". This would appear to exclude software from patentability. However, Section 25(3) then goes on to state that: "The provisions of subsection (2) shall prevent, only to the extent which a patent or an application to a patent relates to that thing as such, anything from being treated as an invention for the purposes of this Act".
Section 25(3) qualifies Section 25(2) and limits or qualifies the patentability exclusion to a program for a computer "as such". The meaning of this wording is not very clear, and South African courts have not decided on its meaning, but the sections together could be interpreted as precluding the patenting of "pure software" or program code, as opposed to software-related inventions in general.
Similar wording in European legislation has been the subject of exhaustive analysis and numerous decisions by the Boards of Appeal of the European Patent Office.
In Europe, a software-related invention will be patentable if it has "technical character" or produces a "technical effect", subject to the normal tests of novelty and inventiveness. A software-related invention will be patentable in the USA if it produces "a useful, concrete and tangible result." Most other countries tend to take a position similar to either the US or the European line, and in the absence of existing South African case law, we can expect a South African court to be guided by the European approach.
Thus it is by no means the case, as alleged by anti-software patent activists, that any software patent must necessarily be invalid. In fact, in the circumstances it could be argued that software companies would be foolish not to apply for patents until the position is clarified, either by a court decision or by amendment of the Patents Act. Most countries allow software-related inventions to be patented to a greater or lesser extent, and there is no reason to expect South Africa to take a different position. If software turned out to be entirely unpatentable in South Africa we would be an exception to the world-wide trend, and there is no logical basis for assuming that our courts would interpret the existing legislation in such an extreme way.
South African patent applications are not examined for novelty or non-obviousness of the inventions they cover. This applies to all patent applications, not just software applications. Like a number of other developing countries, the South African Patent Office does not have the resources to conduct a comprehensive technical and legal examination of patent applications. The onus is placed on a patent applicant to do the necessary homework to ensure that the patent is valid, and there is no doubt that many patents are granted which are not valid. However, a patentee will not easily be able to enforce an invalid patent and may be penalised for trying to do so. For example, Section 68 of the Patents Act provides that the Court can take the conduct of a patentee into account in a patent infringement case, where the patentee has attempted to enforce an invalid patent.
Because patent offices in different countries apply different laws and practices, and have different standards, it is inevitable that patents for a particular invention may be granted in some countries and rejected in others, even in the light of the same "prior art" documents. For example, a patent examiner in one country may decide that an invention is obvious in the light of the existing state of the art, while another may feel that an inventive step has been made. At examining patent offices it is likely that a patent application will be rejected initially, and it may only be granted after multiple rounds of argument with the patent examiner, or even a lengthy appeal process. Thus, to argue that the rejection of a patent application for a software-related invention in the USA, for example, proves that a corresponding South African patent application should never have been filed, fails to take the real-world situation into account.
Whether or not South Africa should introduce a patent examination system is an interesting question. However, this is not as simple as it sounds. It would require many highly trained and technically qualified patent examiners to carry out a substantive examination of all South African patent applications, with corresponding cost implications. A poor examination may be worse than none at all, so this option cannot be approached in a cavalier manner. One approach that could be considered is outsourcing the examination to a major patent office, although most major patent offices are already overburdened and might be reluctant to take this on.
There has been extensive debate, particularly in Europe and the USA, on the issue of software patents and whether or not they are a benefit or a curse. Not surprisingly, companies that file software patents favour them while academics, open source proponents and smaller software developers without patents of their own are generally opposed to them.
One thing that everyone can agree on is that uncertainty on this issue is undesirable from almost all points of view. Rather than targeting software companies and making misleading statements suggesting that there is anything wrong in such companies trying to patent their technology, therefore, anti-software patent activists would do well to press for clarification of South Africa’s legislation. They should appreciate, however, that there is also a strong counter view to theirs, to the effect that software-related inventions should be treated in the same way as other technology, and that South Africa’s Patents Act should rather be amended to remove any outdated restrictions on the patentability of such inventions, as has been the trend in a number of other countries.
See, for example, the article titled "The folly of legislating against software patents" by Craig Opperman, which can be found on Spoor & Fisher’s website and which debunks anti-software patent arguments.
In conclusion, there is nothing wrong in filing patent applications for software or software-related inventions. This applies to business method-related inventions as well. Patents granted for such inventions in South Africa are likely to be valid if the patentee takes the necessary care to frame the patent claims correctly, bearing in mind the experience in other countries with similar legislation. Arguments about the desirability or otherwise of such patents tend to assume that software is a special category of subject matter that should be treated differently from other technology that can be patented. This is an interesting debate, which should go forward bearing in mind that the patent system has proven itself as an engine for economic development worldwide. Restrictions on the patentability of technology that was in its infancy 30 years ago, when the relevant legislation was drafted, may no longer be appropriate today.