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The patentability of software and computer implemented
technologies has been a veritable hotspot in patent law over recent
years in many countries. The Israeli Patent Office has now, after
lengthy deliberations, settled on a formal policy. And, for those
seeking to protect technology in that space, the news is
particularly positive for commercially savvy innovators.
Historical Context
For a number of years, the Israeli Patent Office had adopted a
restrictive standard in relation to computer implemented
technologies. This created significant challenges for patent
applicants, and to some extent placed Israel off the radar as a
target market for many international businesses.
Amid discontent from a number of parties, the Israeli Patent
Office embarked on a review to determine an appropriate and
consistent set of examination guidelines. Following a period of
public consultation, a set of final guidelines have been
released.
New Examination Guidelines
In short, the guidelines define a relatively liberal position,
rendering it possible to obtain protection for a wide range of
software and computer implemented technologies. Even business
methods are permissible, provided they exhibit certain
characteristics.
At their core, the new guidelines confirm that examination
should be broken down into two distinct aspects:
Determination as to whether the invention falls in a
"field of technology".
Consideration of novelty and inventive step.
This is encouraging, noting some other patent offices (without
mentioning any specific names) have tended to use field of
technology assessment as a quasi inventive step replacement,
seemingly to avoid conducting appropriate prior art searches.
In terms of (i), the new guidelines move away from former
practices that rejected computer implemented inventions on grounds
that they are merely computational stages of a computer program, or
automation of mental acts.
The new test is framed around identification of a "concrete
technological character". In this regard, although abstract
concepts such as mathematical formulae, rules for playing games,
and metal acts are in themselves unpatentable, combining those
concepts with additional technological means may result in the
requisite technological character. The guidelines provide a number
of examples of patentable claims across a range of technologies,
which are testament to the more liberal approach being adopted.
The current approach of the Israeli Patent Office is intended to
bring their practices into closer conformity with other leading
jurisdictions.
Furthermore, the guidelines specifically address and overcome
issues that are identifiable in the current Australian Patent
Office practices, further isolating Australia's present
restrictive practices from the US. There is hope that the trend in
Australia will reverse before too long, with Shelston IP
scheduled to appear in a significant Federal Court appeal this
November that is directed to this very issue.
The variation of practices between jurisdictions in allowing the
protection of software related technologies, and the state of flux
in practices in a number of those jurisdictions is an ongoing
challenge for software innovators, but certainly not one that
cannot be met.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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