There are two approaches to granting software patents. According to one, software patents should be allowed, while according to the other, software patents should be forbidden. The reason that opponents to granting software patents raise is that software, including flowcharts, consist of series of mental steps. And since it is inconceivable to limit freedom of thought, they are opposed to granting software patents.
Presently, we need to make acquaintance with two terms: a computer and software.
What is a computer, and what is software
The basic definition of computer is a device combining a processor with memory that stores execution code. The term code refers to instructions for reading the content of the memory, changing memory content, performing manipulations (such as addition, subtraction, and so on) of the content stored in the memory, and so on. The term software refers to the code stored in the memory.
What is an algorithm?
Now, as the terms computer and software have been clarified, let's define the term algorithm. The term algorithm is defined herein as a step-by-step set of operations to be performed for obtaining a goal.
The opponents to granting software patents actually refer to algorithms but not to software per se. Algorithm is considered by the opponents as mental steps. As such, the wording of the specification of a patent application should be as distant as possible from the definition of mental steps. And indeed, patent attorneys avoid using the term "algorithm". They use alternative terminology, such as "process", "method", "steps", and so on.
A few years ago we were introduced to a new concept – smartphone. The term smartphone is defined herein as a combination of a desktop computer with a cellular telephone.
Along with the smartphone we have been introduced to a new term – application. An application is a code executed on the computer component of a smartphone.
Should an application be considered as algorithm? Not necessarily.
The problem of denial of the right to grant a patent on an algorithm
Let's assume that a certain computer company produces "fast" computers, and the speed is obtained thanks to their hardware, which is designed to execute intensive calculations.
If someone would obtain the same speed by new algorithms, it would be a technological advantage achieved through software. As such, according to the common sense, such software is worthy of patent protection. But patent authorities may not see it in this way, and there are precedents, as well, of such cases.
When is an application not considered as algorithm?
One of the tests for indicating whether a system that makes use of an algorithm comprises "tangible technological character" is described in section 7.2 of chapter 23 of the Patent Examiners Work Instructions:
In order to determine whether an invention is in a technological field, one also can use specific tests according to the invention described in the patent application, which will help to indicate whether the invention is "in a technological field".
Indicating whether an invention is in a technological field can be done by determining that the invention, whether product or process, involves carrying out a tangible technological process (as discussed in the 23/94 United Technologies v Commissioner of Patents , provincial laws, Vol. Z (8) 729) case. A tangible technological process means an expression of physical properties in anything on which the invention is carried out, or in the nature of the act that the product or process performs (see the way in which these matters were discussed by the Appeal Court extension of the European Court, concerning the G0003 / 08 decision of 05.12.2010).
In the majority of cases, there will be no difficulty in classifying the appropriate technical field of a claim which is a product (which is not claimed as a process). However, when there is difficulty in determining an invention as being in a technological field, a major test for this purpose is detecting the existence of a tangible technological nature in the claimed product or process, or in the result of the process.
Saying it more simply, if a process performed on a machine comprising a computer and software causes a tangible change, or involves an act of a tangible nature, or the result of the process is tangible, then a patent on the invention cannot be denied overwhelmingly. In the aforesaid case (United Technologies v Patent Commissioner), the subject matter is a computer system installed in a helicopter, and performs a program for optimization of the fuel consumption of the helicopter in-flight (i.e., in real time). Judge Brenner, who sat in judgment, wrote "There is no place to demand that the computer program will change the structure of a computer, but merely the fuel consumption."
As per an application executed on a smartphone - GPS sensor, camera and touch screen are examples of input means installed in a smartphone, i.e., devices that carry out an operation of a tangible nature. And as said, if an invention involves an act of tangible nature, a patent on the invention cannot be denied overwhelmingly.
Examples of output means installed in a smartphone are screen, speaker and USB interface. As said, if a process is performed on a machine that comprises a computer and software causes a tangible change, a patent on the invention cannot be denied overwhelmingly.
As such, there is a point in evaluating the role of the input and output of an invention, in order to determine whether the invention can be granted a patent even in patent authorities that overwhelmingly deny software patents.
The recommendation of patent attorney David Pressman
David Pressman is an experienced American patent attorney who has published several editions of his book, "Patent it Yourself". He demonstrates how to draft a claim on a method for inserting a string into another string. For example, let's assume we have a string "the method allows fast calculations" and we have to add the string "very" before the word "fast".
The manner of inserting one string into another is well known to any word processor user. However, before someone starts to smirk over the patentable subject matters, let us mention the way of unlocking a smartphone. Firstly, a user has to press on a physical button, and then he has to pass his finger across the smartphone's screen. In this way, unintentional unlocking of the smartphone is prevented. And for those who wonder, this is a registered patent of Apple, which of course is infringed by other smartphone and tablet computer manufacturers.
Let's return to the string example. The claim starts by defining the hardware elements, such as a memory array for storing the "other" string, a pointer for pointing on the memory where the added string should be inserted, a processor capable of storing data in the memory and retrieving data from the memory, and so on. Afterwards, the execution method is defined, i.e., by clicking on a character key, shifting the memory array one cell from the pointing location, and inserting in the pointed memory cell the value of the chosen character.
Let's summarize: There are two components in the claim: the hardware elements and the steps that make use of the hardware elements, i.e., the algorithm.
By the way, in patenting software matters, the attitude of the USPTO (the US Patent and Trademark Office) is more liberal than the conservative attitude of the EPO (the European Patent Office) and the ILPO (the Israeli Patent Office). As such, in order to examine the likelihood of a software invention being granted a patent in Europe, a pilot can be issued in Israel, in which the examination can be accelerated, and the fees accrued much less than the those of the EPO. But this subject matter should be discussed separately.
Other protective forms of software and smartphone applications
In Israel the traditional way for protecting computer programs is by copyright. A computer program is considered by the law and practice to be a work of art, and as such, copying a computer program requires its copyright holder’s consent. Since in Israel there is no organized procedure for registration of copyrights, some recommend retaining a copy of the software with a law office, in the event a legal difficulty arises in the future. It should be noted that in Israel, the idea behind the software cannot be protected by copyright law. The copyright law is directed to protect the expression of an idea, but not the idea per se.
The logo of software can be protected by registration of the logo as a trademark.