AIPPI Congress Report 16: Patentability of Computer-Implemented Inventions

The AmeriKat adopting a "wait and see"
approach...until you walk by

The wonderful AusKat, Tom Reid (Accenture), is back with his final report from AIPPI's Congress in Sydney, this time on computer-implemented inventions and the work of AIPPI on this year's resolution.  Over to Tom:  

"Since 1975, AIPPI has taken the view that an invention should not be unpatentable subject matter per se merely because it involves software or is implemented in a computer. In the wake of Alice Corp and other recent judicial and patent office decisions around the world, this difficult topic was again on the agenda at AIPPI’s annual congress in Sydney, resulting in the passing of a further resolution. 

AIPPI has a Standing Committee on Information Technology and Internet, which last year published a useful paper on the patentability of computer-implemented inventions in the US, Japan, Europe, China, Canada, Australia, and New Zealand. The paper makes a macroeconomic argument for an extension of patentability, noting that the services industry is increasingly important to the economies of industrialised countries, and that “developments in the service industry are generally new working methods very often implemented through the use of computer networks such as the Internet”. The paper characterises the policy question as one of “applying the known protection system [ie the patent system] to the economic sector with the strongest growth [ie the service sector, in industrialised countries at least]”. 

But as this year’s resolution recited, that application has in fact been scattered, to the point that none of the US, European, Japanese, Chinese, or Korean patent offices even use the same terminology to describe computer-implemented inventions. 

After reaffirming the principle that patents should be available for inventions in all fields of technology, and that computer-implemented inventions should not be excluded per se, the key tenets of AIPPI’s resolution were as follows:

(a) The eligibility of a computer-implemented invention for patent protection should not depend on the prior art or any assessment of novelty or inventive step. In other words, subject matter eligibility should assessed independently of these other requirements.  

(b) A claim to a computer-implemented invention should pass the eligibility requirement if it defines an invention in at least one field of technology. Whether a claim does so should be assessed on a claim by claim basis, in relation to each claim as a whole. 

The references to a “field of technology” adopt the language of Article 27 of TRIPS and Article 52 of the European Patent Convention. A mooted statement to the effect that a claim should be considered to define an invention in a field of technology only if it makes a novel and inventive contribution to that field of technology was debated, but not adopted in the final resolution. The resolution says nothing further about what it means, in AIPPI’s view, to “define an invention in a field of technology”.

The question therefore remains open. But it is ultimately perhaps important to answer if AIPPI’s goal of international harmonisation of laws is to be achieved. As AIPPI’s study guidelines noted: 

"There is an inherent challenge in providing a definition of the areas of human endeavour which qualify as sources of patentable subject matter. On one view, a “static” definition would frustrate the ultimate purpose of patent law, namely to provide protection for unforeseen, non-obvious subject matter. However, attempts to find a “dynamic” or “open” definition of the scope of patentable subject matter which takes account of this purpose often fail to provide the necessary limitation or boundaries."

The guidelines noted further that patent offices and courts have laboured “without a workable doctrine to underpin the reasoning for their decisions”. 

In the AIPPI 2017 Congress’s host jurisdiction of Australia, a December 2016 government-commissioned review by the Productivity Commission recommended a wait-and-see strategy in relation to public policy on software patents in the wake of two cases, RPL Central and Research Affiliates, which (broadly speaking) followed an approach similar to that in Alice Corp. Wait and see, it seems, is the consensus."