Patent pending

In an age where software has found its way into practically everything, from washing machines to mobile phones, Europe is eagerly waiting to know the future of a new directive on the patentability of computer implemented inventions (CII Directive), geared to harmonise national patent laws and clarify once and for all the current policy conflicts that abound.

European Parliament is set to decide whether to give its thumbs up to the CII Directive through the co-decision procedure when the revised proposal of the directive following the common position adopted by the Council last March will be put to the test.

The raison d'etre of the CII Directive is not to broaden the scope of patentability. The directive aims at unifying the myriad of patent laws in Europe and the experience gained in this field by the European Patent Office where computer implemented inventions have been accepted as being patentable.

While there seems to be agreement on the basic principle that a revision in this grey area is required, finding the right balance between the needs and interests of the software industry and the community in general has not been an easy task. The question is however, in what way will the Maltese software community benefit from the CII Directive? The patentability of software in Europe is not a new phenomenon. Patents for certain types of computer implemented inventions have been granted in Europe for the past 20 years but Malta denies any patent protection for such inventions.

The fact that presently one cannot apply for a patent for a computer implemented invention in Malta means that some local players, including small start-up companies, have to consider filing a patent application in Europe through another jurisdiction in order to seek protection for their inventions based on computer software. This renders the application process for a Maltese inventor an arduous task involving a complicated and more expensive exercise and goes completely against the principle of having a level playingfield throughout the EU.

Even if the patent application is successful, the eventual European patent would not automatically enjoy local recognition and create a situation where, if granted, the patent for a computer implemented invention would be completely valueless in Malta.

The harmonisation of the patent regime applicable throughout the European Union would remove once and for all the current obstacles faced by those in the Maltese software industry who would wish to apply for a patent for computer-implemented inventions.

The main scope behind the introduction of the CII Directive is to provide a clear EU-wide regulation on the patentability of computer implemented inventions. Nonetheless, the CII Directive will not automatically mean that all software will be patentable. Together with the requirements of novelty and inventive step, the technical contribution made by the software has always been considered as the golden rule for patentability of such inventions in Europe. Caselaw by the Appeals Board of the European Patent Office has highlighted the importance of technical contribution in the granting of such patents.

The common position adopted by the EU Council would not expand the present protection of the law to all software as the patenting of software which does not make a technical contribution would not be possible. Software patents for business methods and not relating to any technical contribution will still not be accepted.

In light of the present approach adopted on the other side of the Atlantic, where a more liberal patenting regime exists, the European legislators understand that the introduction of a common framework would provide legal certainty on how inventors can protect innovations based on computers and digital technology.

Throughout the past decade the United States has constantly widened its interpretation and approach on the patentability of computer implemented inventions where software which does not make a technical contribution but solely provides for a business method has been deemed to be patentable.

In tangible terms, what will the local software community gain from the introduction of the CII Directive in the form advocated by the European Council in its common position? The CII Directive will enable SMEs to protect their intellectual property assets in a harmonised environment where a patented computer implemented invention would enjoy the same legal protection in all the EU countries, simplifying the patenting process.

If we want to continue promoting Malta as a Mediterranean hub of innovation through information technology by generating new employment and fostering foreign investment in this area, a rethinking of what is patentable in Malta when it comes to computer implemented inventions is paramount.

While the CII Directive would harmonise the legal landscape thus introducing the patentability of computer implemented inventions to our shores, people who are involved in the software development business locally need to realise that the protection in their works through the patent regime would enable them to position their products in a market geared as a level playing field between the big international players and our indigenous software community.

Dr. Ghio holds a Masters with distinction in information technology and telecommunications law from the University of Strathclyde, Scotland.

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