Israeli Patent Office Releases Position on the Patentability of Software
by Jonathan Agmon
The below is a free translation of the Israeli Patent Office position on the patentability of software inventions released December 30, 2010:
To: Applicant’s, Patent Attorneys and Advocates
From: Dr Meir Noam, Head of the Patent Office, Registrar of Patents, Utility Patents and Trademarks
Greetings to all,
Re: Software inventions
Further to a round-table meeting on the subject of software inventions, the Patent Office had issued on November 5, 2009, a public call to submit position papers for technological inventions in the field of software. The question that was raised was “Is there a need to reexamine the Patent’s Office policy regarding technological inventions in the field of software”.
The public responded to the call and tens of position papers were submitted from academia, people who engage in the field of software and the practitioners (advocates and patent attorneys). The range of opinions was very broad – from positions that totally object to the grant of patents in this field on the one hand, and opinions that support granting patents for software per se, on the other hand.
When making our position we took into account the provisions of the Israeli Patent Law and the Israeli Copyright Law. We are also aware of the disagreement in this matter between the European Union Courts, United States Courts and Courts in Britain, including the latest decisions on this matter.
We are aware of the implementations difficulties, which exists in every directive that is issued in the theoretical level, without relating to any specific case.
The policy principals that the Patent Office determined, following the position papers from the public, consulting with the staff of examiners and the legal staff, are as follows:
1. An invention as it is defined in the layout of claims must be in a technological field.
This requirement derives from the provision of article 3 of the Patent Law, 5727 – 1967 (Hereinafter: “the Law”).
2. An invention is examined as a whole, without separating the software elements from hardware elements and without focusing on the software, but only the contribution of the invention in relation to the prior art. The contribution of the invention must be expressed in the layout of the claims.
3. An invention as a whole must result in a contribution that has an actual expression in a technological field.
4. The contribution of the invention, as claimed in relation to the prior art has to be new and non-obvious, as required in article 3 of the Law. Alternatively, the means (in their entirety) of which the invention provides the contribution must be new and non-obvious.
5. If the process that is claimed in the patent application is only the steps performed by the software, the invention will not be considered patentable. The software by itself is not a technological expression, inasmuch as software by itself is protected by the Copyright Law.
The reasons for the policy, along with the examination procedure that will be written following the change of policy, will be distributed by the end of January 2011. With their distribution, the new policy will be implemented by the Patent Office. The policy will be implemented on patent applications for which examination has not ended by February 1, 2011.
Dr Meir Noam,
Head of the Patent Office,
Registrar of Patents, Utility Patents and Trademarks