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.
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