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Patenting computer programs towards Europe?

from Outsourcing&More #51 March-April 2020

from Outsourcing&More #51 March-April 2020, page 102

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Every company that creates new computer programs, e.g. for management or supporting devices, would like to protect their product against competing companies.

Obtaining a patent for a computer program is one option for protection. Basically, the patent temporarily guar antees the exclusive use of the invention on the market. However, this is not an easy task, especially in Poland. This situation may change, because on 27 February 2020 an amendment to the Polish Industrial Property Law 1 enters into force. The amendment aims, among other things, to adapt Polish laws on the possibility of patenting software to the European regulations. Can we now expect new IT patents?

PATENTING COMPUTER PROGRAMS IN POLAND – THE CURRENT STATUS Under Polish law, patents are granted for inventions. These inventions must be of a technical character, have an inventive step, be novel and have industrial application. The Polish law lists solu tions that cannot be inventions and as a result are excluded from patenta bility. This includes programs for digital machines. The approach of the Polish Patent Office to IT patents is generally negative. Under the wording of the Polish regulations, the Patent Office should refuse to grant patents covering only

1 Act of 30 June 2000 – Industrial Property Law (Journal of Laws of 2017 No. 776 with amendments), which was amended by the Act of 16 October 2019 amending the Industrial Property Law (Journal of Laws of 2019, No. 2309).

computer programs. However, there exists the concept of computer-imple mented inventions. Under The Inventor’s Guide posted on the website of the Patent Office, these inventions are generally acceptable. The current understanding of the Patent Office is that the creation of a new braking method in which a computer program will be a part may be patentable. This means that a patent can be obtained for an invention in which a computer program is a part of that invention. This program will perform, accelerate or automate certain activities within the invention. 2 However, despite such declarations, the Patent Office relatively rarely grants patents for computer-implemented inventions. A computer element in an application makes the proceedings lengthy and complicated. The usual basis for patent refusal is the abstract instead of technical character of these inventions. In some materials, the Patent Office even says that computer-implemented inventions are ‘masking reality’. 3

2 The Inventor's Guide. Methodology for testing the patentability of inventions and utility models, p. 36, https://www.uprp.pl/uprp/_ gAllery/25/24/25240/Poradnik_wynalazcy_-_ Metodyka_badania_zdolnosci_patentowej_ wynalazkow_i_wzorow_uzytkowych.pdf.

3 Presentation of the Polish Patent Office 'Policy of the Patent Office of the Republic of Poland for the assessment of patent applications regarding the presence of an invention', Conference 'Computer programs and patent and copyright law' 2009.

PATENTING COMPUTER PROGRAMS IN EUROPE Under the Munich Convention on the European patent 4 , it is possible to apply for a patent which, once validated, will be valid in designated European countries. European patents are granted by the European Patent Office for inventions in all fields of technology. The prerequisites are: novelty, technical level and indus trial use. The Munich Convention says that computer programs are excluded from protection, i.e. they are not inventions, but

4 European Patent Convention concluded in Munich on 5 October 1973 (Journal of Laws of 2004, No. 79, item 737) also called the Munich Convention.

only if the application is for a computer program ‘as such’. This wording is understood in such a way that computer-implemented inventions and computer programs with a technical character are patentable. The EPO has also developed a doctrine clarifying when an invention is of a technical nature. It is the doctrine of further technical effect. Further technical effect means an effect which goes beyond the basic connections between a program and a computer resulting from the use of the program. According to the current guidelines of the European Patent Office, the standard of further technical effect is met in a program that indicates the method of controlling an anti-lock braking system in a car, determining emissions by an X-ray device, compressing video and a program that controls parts of a computer, e.g. a processor or memory. 5 Such programs must still meet the other prerequisites for patent protection.

5 EPO Guidelines for examination 2019, Programs for computers, https://www.epo.org/law-practice/ legal-texts/html/guidelines/e/g_ii_3_6.htm, access: 19.01.2020.

20 The Munich Convention says that computer programs are excluded from protection, i.e. they are not inventions, but only if the application is for a computer program 'as such'. This wording is understood in such a way that computer-implemented inventions and computer programs with a technical character are patentable.

It is not yet known whether the Polish Patent Office intends to change its own policy and adopt the practice of the European Patent Office, or whether the change is only an amendment to the wording while maintaining the current practice.

AMENDING THE POLISH LAW Even if a patent for an IT invention was granted by the European Patent Office, the Polish Patent Office has refused to grant a patent to same inventions in Poland. 6 European patents could also be invalidated in Poland. The problem of such discrepancies has been publi cally noted. Some courts, including the Polish Supreme Administrative Court, 7 pointed out that a more liberal approach to patenting computer programs is preferred. The current practice resulted in a difficult situation for Polish IT companies, which could not protect and enforce their rights in Poland. Granting potential protection was associated with a long and costly procedure. At the same time, foreign entities could freely exercise their rights outside Poland.

Let us remind ourselves here that an alternative form of computer program protection is copyright law. Copyrights to a computer program entails protection of the code and part of the documentation. It does not provide protection for technical solutions. In such situation, if there are difficulties in obtaining a patent, the protection of a computer program is very narrow in scope. It comes down to protection against mere copying of the code.

Justification of the amendment says that it aims to unify the rules of patenting digital solutions in the Polish Patent Office and the European Patent Office. This is to be done by unifying the terminology to make the Polish act consistent with the Munich Convention. Until now, the Polish act stated that ‘programs for digital machines’ are not inventions. The amendment replaces ‘programs for digital machines’ with ‘computer programs’. These programs cannot be patentable only if the application refers to them ‘as such’. It is exactly the same wording as in the Munich Convention. WHAT CAN BE EXPECTED? It seems that the Polish Patent Office and the European Patent Office offi cially present similar approaches. They accept applications for computer-implemented inventions. However, more important than the regula tions is the practice and approach of the offices to understanding these regulations. There are significant differences in the policy of both offices. There is a liberal approach at the European Patent Office. Computer-implemented inventions and computer programs with further technical effect are acceptable. The Polish Patent Office has a negative attitude towards IT patents. Amending the wording of the Polish provisions will not be effective without changing the approach and policy so that it is more liberal. It is not yet known whether the Polish Patent Office intends to change its own policy and adopt the practice of the European Patent Office, or whether the change is only an amendment to the wording while maintaining the current practice.

Given the purpose of the amendment, it may be expected that the Polish Patent Office’s approach to patenting computer-implemented inventions will be more liberal. Possibly, positive decisions concerning computer-implemented inventions will occur at the Polish Office. It seems that granting patents for computer programs with further technical effect may be more difficult. These are very far-reaching changes, which completely rephrase the current Polish practice. Nevertheless, we are slowly moving towards Europe when it comes to software patenting.

Author:

6 K. Szczepanowska-Kozłowska, The dilemma of (in)validity of European software patents in Poland, Kluwer Patent Blog 2011, http:// patentblog.kluweriplaw.com/2011/12/02/thedilemma-of-invalidity-of-european-softwarepatents-n-poland/, access: 15.01.2020.

Patrycja Cierlak LL.M. Lawyer at Baker McKenzie Krzyżowski and Partners sp.k., PhD candidate at Jagiellonian University