Introduction
European Patent Protection
Dutch Patent Protection
Conclusion


Introduction

It has long been accepted that computer programs are protected by copyright. Copyright generally protects the perceptible form or expression of a work. In the case of computer programs copyright protects the source code and the object code, as well as the (graphic) user interfaces as far as these objects have their own personal character and bear the hallmarks of their maker (requirements that are easily met). A copyright owner can forbid others from copying or making the copyrighted work available to the public until 70 years after his death.

Less well known, but already firmly established in European Patent Office (EPO) case law (as well as in that of the Dutch and US Patent Offices) is patent protection for computer programs. If a computer program involves an inventive step, then it is entitled to protection under European patent law. While the patent is valid the holder can forbid others from performing various commercial acts involving the invention, such as manufacturing, selling, using and offering products or performing methods comprising the invention.

Because patent protection extends over the program's function it provides more effective protection than copyright. First, the protection is wider than copyright protection and extends to almost any commercial act involving the invention. Second, a patent protects the function of a computer program, whereas copyright only protects its form or perceptible expression. Copyright protection can easily be circumvented by creating a program with the same function in different lines of code and with a different (graphic) user interface. Patent protection is therefore essential to protect a program's function. A granted patent is also evidence of when the patentee invented a particular product or method (ie, when the patent application was filed).

However, there is also a downside to patent protection. When applying for a patent one must disclose the invention in detail, which means that the program's function and the way that this function is realized will become public knowledge. Moreover, to be entitled to patent protection an invention must be new, involve sufficient inventiveness and be capable of industrial application. Drafting a patent application is relatively expensive and requires extensive cooperation between the inventor and a patent attorney. The grant procedure is quite long (from six months to several years) and a yearly fee, which increases towards the end of the patent protection period, must be paid.

European Patent Protection

One reason why numerous important cases regarding the patenting of computer programs have been brought before the EPO is because the European Patent Convention provides that computer programs per se are not regarded as inventions and are therefore not subject to patent protection. This explicit exclusion from the convention (which can also be found in the Dutch Patent Act of 1995) may be one of the reasons why relatively few companies/inventors have applied for software patents.

Since 1985 the EPO has developed a very narrow interpretation of 'computer programs per se' to circumvent the convention exclusion and open the door to the protection of software-related inventions.

In 1986 the EPO allowed a patent for a method of digitally processing satellite images that was embodied in a computer program. Ten years later the EPO had to consider the patentability of a computer system for managing and integrating different information systems within a company. This computer system, which contained software to generate its functionality, was deemed protectable by the EPO because the invention involved 'technical considerations'. The EPO decided that the purpose or goal of the invention did not have to be technical.

Before 1989 patent protection of computer programs was still limited because the EPO interpreted the exclusion of computer programs per se as covering computer programs on carriers (eg, compact discs or tapes). Because the carriers containing computer programs were excluded from protection, a patentee could never invoke his right against third parties offering, selling or distributing copies of the computer programs on carriers. In effect, the only act that would infringe the patent was the execution of a patented program or the performance of a patented automated process by an end user. This largely undermined the enforcement of computer software patents.

In 1998 the EPO granted two IBM patent applications that explicitly claimed protection for the program as a product (on a carrier). With these decisions the EPO paved the way for a logical and sufficient patent protection system for computer programs. The only requirement for patentability that remains (except, of course, for the standard requirements of novelty, inventive step and capability of industrial application) is that the (execution of the) program should have a technical effect that extends beyond the usual technical (electronic) interaction between hardware and software loaded on that hardware. Therefore, the EPO also uses the expression "a further technical effect".

Dutch Patent Protection

Under the Patent Act of 1910 the Dutch Patent Office also considered that computer programs could be subject to patent protection in conjunction with a machine (computer) that executes the program. Under the old Patent Act the Dutch Patent Office did not establish the requirement of a technical effect but instead required that the execution of a program constituted a 'change in nature'. In the most recent decisions available from the Dutch Patent Office (from 1990) it is considered that the transformation of data can be regarded as a change in nature. At first glance it seems that the Dutch Patent Office uses a broader criterion than the EPO. However, the relevant decisions were rendered before the exclusion of computer programs per se from patentability was included in Dutch patent law by way of the Dutch Patent Act 1995 (thereby complying with the exclusions from patentability as laid down in the European Patent Convention). In principle, the Dutch Patent Office's policy should not deviate substantially from the EPO's policy. Therefore, it is hard to predict whether the Dutch Patent Office will continue on its own path or will seek to comply with the EPO case law.

Conclusion

Under both European and Dutch patent law protection of computer programs is possible, and this protection may even extend to the executable program on a carrier. However, when executed the program must show a 'further technical effect', that is, a technical effect that goes beyond the usual electronic interaction between hardware and software.

The precise definition of 'technical' has not been clarified by the EPO. However, it is likely that a method for doing business that is contained in a computer program does not generate technical results or further a technical process, and hence lacks a 'further technical effect'. It is therefore currently not certain whether the EPO - like the US Patent Office - will also allow (automated) methods for doing business to be patented.


For further information on this topic please contact Peter Burgers or Ruprecht Hermans at NautaDutilh by telephone (+31 20 5414940) or by fax (+31 20 5414700) or by email ([email protected] or [email protected]).