Software patents under TRIPs Agreement

The WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), particularly Article 27, are important elements in the debate on the international legal framework for the patentability of software, and on whether software and computer-implemented inventions should be considered as a field of technology.

Article 27 of TRIPs

Article 27 paragraph 1 of TRIPs states that::"(...) patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. (...) patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced."

The only acceptable exceptions to this provision are laid down in the paragraphs 2 and 3 of the same Article 27. The following elements may be excluded from patentability by WTO members under TRIPs:
*(...) inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law. "(paragraph 2)"
*diagnostic, therapeutic and surgical methods for the treatment of humans or animals; "(paragraph 3(a))" and
*plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. (...) "(paragraph 3(b))".

However as Paul Hartnack, then Comptroller-General of the UK Patent Office, commented in 1998 [http://web.archive.org/web/20010608115154/http://www.patent.gov.uk/about/ippd/softpat/1000.htm] :

:"Some have argued that the TRIPS agreement requires us to grant patents for software because it says "patents shall be available for any inventions.....in all fields of technology, provided they are.....capable of industrial application". However, it depends on how you interpret these words."

:"Is a piece of pure software an invention? European law says it isn’t. Is pure software technology? Many would say no. Is it capable of "industrial" application? Again, for much software many would say no."

:"TRIPS is an argument for wider protection for software. But the decision to do so should be based on sound economic reasons. Would it be in the interests of European industry, and European consumers, to take this step?"

To date, the interpretation of Article 27 has been tested in the 2002 dispute between the U.S. and Argentina over patent protection for pharmaceuticals (which was solved by mutual agreement) and the 2000 panel report also on patent protection for pharmaceuticals, in a case brought by the EU against Canada.

However, there have been no dispute settlement procedures regarding software patents. Its relevance for patentability in the domains of, for example, computer-implemented business methods, computer science and software information technology remains uncertain, since the TRIPs agreement is subject to interpretation. [ John Moetteli, " [http://www.patentinfo.net/patentsearchersnet/download/THE_PATENTABILITY_OF_SOFTWARE_IN_THE_US_AND_EUROPE.pdf The Patentability of Software in the U.S. and Europe] ", presented at St. Gallen, Switzerland, October 28, 2005, p.3 (pdf), retrieved on July 3, 2006] In other words, whether "inventions" in certain "technologies", such as computer software technology and information technology, are to be considered as inventions and fields of technology for the purposes of patent law under Art. 27 remains an open question.

Relationship with copyright protection

Article 10 paragraph 1 of TRIPs provides that a computer program is a type of work which is eligible for protection under copyright law::"Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971)."

Article 10 paragraph 2 requires that arrangements of information are to be considered as "intellectual creations"::"Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such."

The WIPO Copyright Treaty (WCT), although not binding on WTO members that have not joined the WCT, similarly provides in Article 4::"Computer programs are protected as literary works within the meaning of Article 2 of the Berne Convention. Such protection applies to computer programs, whatever may be the mode or form of their expression."

Article 13 of TRIPs provides that any limitations and exceptions to exploitation of intellectual property rights must generally be restricted (see Berne three-step test)::"Members shall confine limitations and exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the rights holder".

References

See also

*Aerotel v Telco and Macrossan's Application
*EU Directive on the patentability of computer-implemented inventions
*Idea-expression divide

External links

* Official text of the TRIPs Agreement
** [http://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm Articles 9 to 21 of TRIPS]
** [http://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm Articles 27 to 38 of TRIPS]

* All WTO documents on disputes regarding the TRIPs Agreement (including links to the cases on Article 27.1 mentioned above)

** [http://www.wto.org/english/tratop_e/trips_e/intel5_e.htm TRIPS Agreement caselaw]

* SWPAT WG/FFII: [http://swpat.ffii.org/analysis/trips/ The TRIPs Treaty and Software Patents (pdf)]