PatLim – Software, Patentability Criteria

(IPRinfo 2/2012)

Perttu Virtanen
Postdoctoral Researcher, Helsinki Institute for Information Technology HIIT, Aalto University

The PatLim is a collaborative patent law study conducted in close cooperation with the Helsinki Institute of Information Technology HIIT, and Hanken School of Economics under the auspices of the Finnish Academy.

Traditionally, the patent system was designed with one type of invention foremost in mind: A new device or machine covered by a single patent. This notion met marked challenges already in mid-19th Century by the increasing rate of industrialization yielding pressures to amend the system by, among others, introducing and acknowledging the method patents and by evolving the current intricate multiple claim structure and -format.

Recently the patent system faced again novel and increasing pressures for change prompted by the rapid development of science and technology at the turn of the third Millennium.

The cycle of the Third industrial Revolution in the information and communication processing technology sector, abreast with fields such as Nano- and Gene technology, gained further momentum and permeated the progressively networked and interdependent societies introducing also the ubiquitous or pervasive computing bringing the networked computer part of the everyday life.

Hundreds of patents for one product
In the incremental component industries like computer programming and more generally IT new developments are often build upon existing technologies and innovation occurs through small improvements.

For the underlying technological platform and enabler thereof modern products can easily be covered by dozens or even hundreds of different patents, many of them containing software as a component thereof.

Moreover, the networked nature of communication and the smooth functioning of information processing systems increasingly transcend geographic boundaries, increasing pressures for larger, unitary and regional patent systems and emphasizes the need for co-operation between extant jurisdictions.

The protectable subject-matter granted by the patents may envelop such diverse areas as individual hardware components, related software or entire information systems and architectures. The fact that many patents may relate to a single product and that this is a common occurrence creates numerous practical problems for the operation of the patent system both during prosecution and post-grant enforcement stages.

PatLim research program is an interdisciplinary one, combining legal, technological and economic approaches. It aims at exploring some of the controversial issues and chokepoints brought about by the technical and industrial change mentioned above where the pressures are felt within current patent system arising in the field of patent law in the software sector, with specific focus on the European situation.

How does the law react to complex technological issues?
The goal of the research is to provide a richer understanding of the ways that the law reacts to and provokes complex technological phenomena, using the software based invention and IT industry as primary culture.

The analysis covers a broad range of issues since the extant problems may be reflected at various levels of the patent process, spanning from the initial filing of the patent applications and going all the way to the enforcement phase. Accordingly, a clear distinction should be drawn between the existence of a patent right and the way such right can be used.
Different issues and complications might arise with respect to the applicability of the patentability requirements per se, “inner limits”, and according to the way the patent rights exist, are used, or enforced characterized as “outer limits”.

Issues relating to patentable subject matter, the notion of invention or novelty and inventive step can be considered inner limits. Patent flooding, hold-up problems, royalty stacking, and licensing concerns define in their part the outer limits of software patent protection.

Virtually all these elements have undergone remarkable controversy when applied to modern information technology. Whether the perceived difficulties are mere teething problems in the adaptation process or a symptom for a concrete need to renew and amend the entire system calls for a careful study.

Software as a crucial player in a modern society
The extreme importance that software plays in our society is undeniable. At the same time, this is one of the industries that are most affected by the opacity of both the outer and the inner patent limits.

Thus, there is the tangible need to thoroughly investigate software-related patent issues both by means of a theoretical approach and by empirical studies with the emphasis in the European patenting framework. Neglecting this could, in fact, lead to wrong policy decisions as well as inefficient solutions for the whole patent system.

The PatLim research program is an interdisciplinary one, combining legal, technological and economic approaches. This brings the research to the particular expert domain of the research consortium partners, The Hanken School of Economics and Helsinki Institute for Information Technology, HIIT.

The coupled expertise in patent law together with modern information technology and business know-how of the each institution is reflected in the research staff in their respective fields. The duration of research is to cover a span of three years to shed light on the software-patenting related issues and developments above.

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