Background
Software protection in South Africa
Comment


The patenting of "computer-implemented inventions" (ie, software) is a fascinating area of IP law that is constantly changing.

Background

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 them from patent law. After all, the punch card (ie, software) was well protected if it was not possible to copy the layout of the holes in the punch cards.

As software developed, it quickly became apparent that copyright law failed to provide adequate protection. Software could often be rewritten in another language relatively easily, for example, and copyright protection could thus be avoided. An often-heated debate ensued as to whether to include software under the umbrella of patent law:

  • The first view is that software should not 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 software stifles innovation.

The law around patenting of software developed differently in various countries. Two main approaches evolved:

  • One approach allows software to be patented, provided that the functionality implemented by the software is new and inventive. This approach reflects the view that software should not be treated differently to any other form of technology. An example of this might be a new and inventive business method that is implemented in software – this would be patentable in some countries.
  • Another, more widespread, approach is that software can only be patented if it provides a technical effect – that is, a technical solution to a technical problem. Examples of such "technical effect" software include software that:
    • speeds up data transmission speeds; or
    • compresses data for better storage.

In countries that follow this approach, the example above of a new and inventive business method implemented in software would not be patentable.

Software protection in South Africa

South Africa's position with respect to protection of software is unique. Section 25(2)(e) of the Patents Act 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.

At present, there is no case law in South Africa interpreting the meaning of these sections. Therefore, the kind of software that is patentable in South Africa is a grey area.

Comment

In South Africa, patents are not examined at the time of filing; they are only examined if the patent is enforced or challenged. Further, a patent application cannot be filed for software that is already released into the public domain. This means that software developers cannot wait for the first court case to be heard and then decide whether they want to file for patent protection for their software. If they want patent protection, they must file a patent application before they disclose their invention. The patent application will then be granted and the validity of the patent will only be determined when the South African courts issue their first decision on this point.

The best advice for software developers is as follows. If software developers have developed software that they believe is new and inventive, they should not assume that the software is or is not patentable. Rather, they should contact a patent attorney who is an expert in this field.

For further information on this topic please contact Lance Abramson at Spoor & Fisher by telephone (+27 12 676 1111) or email ([email protected]). The Spoor & Fisher website can be accessed at www.spoor.com.