What is the scope of patent protection for computer software? — Singapore vs the EU
Patents are rights granted by a country / territory for an invention that is new, inventive and capable of industrial application. Under the Patent Act (Chapter 221 of Singapore) (“Patent Act”) and the European Patent Convention (“EPC”), these rights are granted to an inventor for a term of 20 years from the date of filing an application for the patent, subject to any extension of the term.
A. Patentability of computer programs in the EU
In the EU, computer programs are excluded from patentability “as such” under Article 52 of EPC:
Article 52(2) — The following in particular shall not be regarded as inventions [that shall be granted European patents]: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information.
Article 52(3) — Article 52(2) shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.
Nonetheless, in the case of EPO T 154/05 (OJ 2008, 46), the European Patent Office held that if the subject matter of the invention has “technical character” it may not be excluded from patentability under Article 52 of the EPC. “Technical character” results either from the physical features of an entity (for a method) or from the use of technical means.
“Technical character” in computer programs
It is important to note that computer programs will not be considered as having “technical character” just because they are used to operate computers.
Rather, computer programs which have a “further technical effect” (i.e. a technical effect that goes beyond the standard physical interaction between a computer program and the computer) when they run computers, would be eligible for patent protection (“Computer-implemented Inventions”). Computer-implemented Inventions are distinguishable from computer programs “as such” and, thereby are not excluded from patentability under Article 52(2) of the EPC.
The European Patent Office (“EPO”) has provided some examples of computer programs possessing “further technical effects” in its Guidelines for Examination:
(a) a computer program which, (i) specifies a method of controlling an anti-lock braking system in a car; (ii) determining emissions by an X-ray device; compressing video; (iii) restoring a distorted digital image, or (iv) encrypting electronic communications, bringing about a “further technical effect” when it is run on a computer;
(b) computer programs implementing security measures for protecting boot integrity or countermeasures against power analysis attacks may have a “technical character” as they rely on a technical understanding of the internal functioning of the computer;
(c) computer programs controlling the internal functioning or operation of a computer, such as processor load balancing or memory allocation; and
(d) computer programs for processing code at low level, such as builders or compilers may have a “technical character”.
From the above examples “further technical effects” which confer “technical character” to a computer program are those that control (i) a technical processes or (ii) the internal functioning of the computer itself or its interfaces.
Two-step process for Computer-implemented Inventions
There are two steps in the process of examining whether a patent can be granted to a Computer-implemented Invention:
Step 1: to assess whether the computer program possesses a “further technical effect”; and
Step 2: to assess whether the computer program satisfies the relevant criteria for patentability (i.e. novelty, inventive step and industrial applicability).
B. Patentability of computer programs in Singapore
In Singapore, the patentability of computer programs was excluded up until 1995, under the repealed Section 13(2) of the Patent Act:
Section 13(2) [REPEALED] — It is hereby declared that the following (among other things) are not inventions for the purposes of this Patent Act, that is to say, anything which consists of (a) a discovery, scientific theory or mathematical method;(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; or (d) the presentation of information, but the foregoing provisions shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or an application for a patent relates to that thing as such.
The above provision bears similarity to Articles 52(2) and (3) of the EPC. However, with effect from 1 January 1996, Section 13(2) of the Patent Act was substituted with a provision for public morality - inventions can be excluded from patentability on grounds of public morality or public policy:
“Section 13(2) — An invention the publication or exploitation of which would be generally expected to encourage offensive, immoral or anti-social behaviour is not a patentable invention.”
Based on the above, it would seem that patentability of inventions may only be denied in clear and obvious cases where there is real evidence of unacceptable harm or a clear consensus of the immorality of the invention.
IPOS’ guidance on non-patentability
The Intellectual Property Office of Singapore (“IPOS”) has thereafter provided some guidance on the types of subject matter which will not be considered inventions under Section 13(1) of the Patent Act.
Specifically, (i) discoveries; (ii) scientific theories and mathematical methods; (iii) aesthetic creations: literary, dramatic, musical or artistic works; (iv) schemes, rules or methods for performing a mental act, playing a game or doing business; and (v) presentation of information, may be grounds for non-patentability (“IPOS’ Non-Patentable Subject Matter”).
These grounds for non-patentability is consistent with major jurisdictions including the US, Europe, the UK and Australia.
Given that the Patent Act is presumably silent on the patentability of computer programs to a certain extent, it may still be argued that computer software may be considered patentable subject matter in Singapore, provided (i) they satisfy the relevant patentability criteria (i.e. whether the subject matter is new, involves an inventive step and is capable of industrial application); and (ii) do not fall within IPOS’ Non-Patentable Subject Matter.
Patentability of Computer-implemented Inventions
IPOS is of the view that for the patentability of Computer-implemented Inventions, a separate analysis of the extent of “actual contribution” which is made by the computer should be undertaken to “establish that the said computer (or other technical features eg. servers, databases, user devices) as defined in the claim, is integral to the invention in order for the actual contribution to comprise said computer (or technical features).”
IPOS has also provided some examples of non-patentable subject matter with respect to computer programs:
- software / algorithms that are by themselves mathematical methods — specifically for AI, neural networks, support vector machines, discriminant analysis, decision trees, k-means and other such computational models and algorithms applied in machine learning are considered mathematical methods; and
- software that is merely a presentation of information — i.e. software that is characterised only by source code, and not by any technical features, is unlikely to be considered an invention on the basis that the “actual contribution” would be a mere presentation of information; and
- software that performs a pure business method — i.e. technical features that are no more than the workings of a standard operating system. The technical features do not interact with the business method to a material extent and do not solve a specific problem, such that the actual contribution is likely to be the business method.
While it is unclear as to the extent or degree a technical feature is required to be “integral” to the invention, from the above examples, it would appear that where the “actual contribution” of the technical features of a computer program would fall within grounds of IPOS’ Non-Patentable Subject Matter, such program may not be patentable.
C. Concluding thoughts
To some extent, Singapore’s position on patentability of computer programs would follow the “contribution approach” — whether the inventive step of the computer program was one that contributed to IPOS’ Non-Patentable Subject Matter and if yes, the computer program was not patentable. Whereas, the practice in EU would follow the “technical effect approach” — whether a computer program has a further technical effect, which confer “technical character” to a computer program, and if no, the computer program was not patentable.
It is also important to note that even if a patent is granted by IPOS or EPO for a computer program, its validity/patentability may really only hold up when it is challenged in legal proceedings. Courts (in both the EU and in Singapore, which is not discussed in this article), tend to take mixed approaches. In other words, some courts cases, which decide on claims regarding the validity/patentability of computer software, have based their decisions using the “contribution approach”, while others have based their decisions using the “technical effect approach”. In addition, some cases in Singapore and the EU have been decided based on the “any hardware approach” — which is to ask whether the computer software had technical features, which involved the use of or was related to a piece of physical hardware (whether a computer, or a pencil and paper). Therefore, these inconsistencies in the approaches taken by courts could affect the validity/patentability of a computer program patent.
The opinions expressed in this article are my own and do not represent the opinions of my employer. This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a suitably qualified lawyer in your jurisdiction. The author does not accept or assume any responsibility or liability in respect of this article.
