AIPPI Study Question - Patentability of computer implemented inventions

Transcription

1 Study Question Submission date: May 7, 2017 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General Patentability of computer implemented inventions Responsible Reporter: Ralph NACK National/Regional Group Contributors name(s) contact Turkey Ayse Ildes ERDEM, Pinar SEN, Ender ERKARATAS, Erdem KAYA, Nevin ONER, Halise ATABAY, Ozlem GUNGOR, Asli BASPINAR I. Current law and practice 1 Does your current law contain any statutory provisions which specifically apply only to CII? 2 Please briefly describe the general patentability requirements in the written statute based law of your jurisdiction which are specifically relevant for the examination of the patentability of CII. The patent can be granted provided that the invention is novel in every field of technology, and containing inventive step and applicable to the industry. Computer programs as such is not deemed to be partake of an invention and therefore excluded from the patentability [Industrial Property Law Article 82 (2/c)]. However, an invention in computer implemented inventions that include a technical character or demonstrating a technical impact can be patented as long as the novelty fulfils the criteria such as inventive step and being applicable to the industry. 3 Under the case law or judicial or administrative practice in your jurisdiction, are there rules which specifically apply only to CII? If yes, please explain. 4 Please briefly describe the general patentability requirements under the case law or judicial or administrative practice of your jurisdiction which are specifically relevant for the examination of the patentability of CII. Page 1 of 8

2 Patent protection is provided for the inventions that are novel in every fields of technology, not obvious and applicable to the industry. These criteria are also valid for the computer aided inventions. In as much as information is obtained related to whether computer implemented inventions in Turkey include a patentable subject matter or not, due to the absence of any lawsuit filed before the Courts with respect to this matter, Turkish Patent and Trademark Office (TURKPATENT) takes the resolutions of EPO (European Patent Office) Inspection Unit and Board of Appeals in consideration related to the applications regarding this matter. It is required for the computer implemented inventions to include a technical character or to demonstrate an advanced technical impact beyond the ordinary in order not to be excluded from the patentability. After it is determined that the computer implemented inventions include a patentable subject matter, then it is proceeded with the assessment of the inventive step and industrial applicability. If the invention is not novel, then in this case the inventive step shall not be analysed and the invention shall be subject to denial. In the event of determining the invention as novel, then the assessment of inventive step is to be proceeded. The determination of the inventive step is performed through problem-solution approach just like in EPO. 5.a Exclusion of non-patentable subject matter per se. Do the statutory provisions, case law or judicial or administrative practice (hereinafter collectively referred to as Law / Practice) in your jurisdiction exclude any particular subject matter relating to CII from patentability per se? In this context, per se means that the non-patentable subject matter is identified without any implicit or explicit examination of the contribution to the state of the art the claimed CII makes. If yes, please answer questions 5.b-5.e, if no, please go to question 6.a. It is stated in the Industrial Property Law Nr applicable in Turkey related to the computer implemented inventions that only the computer programs are excluded from patentability. Apart from this, no certain subject matter exists that is denied regardless of performance of any assessment related to the computer implemented inventions. It is feasible to take the invention under protection through patenting provided that each subject matter including a technical character or having a technical impact beyond an ordinary technical impact fulfils other requirements of patentability (novelty-inventive step-industrial applicability). 5.b Please describe the subject matter excluded from patentability per se and explain in detail how it is identified in practice 5.c If there is any subject matter identified in a patent claim relating to CII that is excluded from patentability per se, is it possible to overcome a rejection of the patent claim by adding other subject matter to the claim? If yes, please answer questions 5.d-5.e, if no, please go to question 6.a 5.d Does the other subject matter need to have a certain quality, e.g. does it need to be inventive? 5.e Can you describe the areas of human endeavour the other subject matter needs to relate to? 6.a Requirement of a contribution in a field of technology. Does the examination of the patentability of CII in your jurisdiction implicitly or explicitly involve an examination of the contribution the claimed CII makes to the state of the art (such examination may be part of a general patentability test or part of the novelty and inventive step/non-obviousness test)? If yes, please answer questions 6.b-6.d, if no, please go to question 7 Page 2 of 8

3 As there is not any certain application and there can be disintegration in the applications, in principle, problem-solution approach applied by EPO to the computer implemented inventions is taken as a basis. According to this, in the event that the components of a computer implemented invention not explained in the previous art introduce a technical solution to any technical problem and if this solution is not obvious for an individual who is an expert in the arts then this invention can be patentable. 6.b Does this test implicitly or explicitly involve excluding contributions from areas of human endeavour which are not deemed to be sources of patentable inventions? In other words, does patentability of CII implicitly or explicitly require a contribution from areas of human endeavour which are deemed to be sources of patentable inventions (e.g. engineering, natural sciences)? If yes, please explain.. When mixed claim types including technical and non-technical components come into question, in parallel with the practices of EPO, the components only introducing a technical solution to a technical problem are taken into consideration in the determination of the inventive step and as a natural consequence of this practice, the subject matters related to human endeavour that are not considered to be patentable are not entitled to benefit from patent protection. 6.c Does this test also implicitly or explicitly require that the relevant contribution the CII makes to the state of the art qualifies as inventive/non-obvious? This additional test may be integrated into the general inventive step / non-obviousness examination, or may be a stand-alone test. If yes, please explain.. Exactly same EPO practice is also applied in this assessment. By means of this method, it is determined whether the computer implemented invention requested to be taken under protection contributes to the state of the art or not and whether the solution presented is obvious to an individual that is expert in the art or not. 6.d Is there an implicit or explicit consensus in your jurisdiction as to the areas of human endeavour which are accepted as sources of patentable CII? If yes, are these areas of human endeavour defined, and if so how? 7 Does the Law / Practice in your jurisdiction contain any specific claim drafting or other formal requirements which are applicable to CII, i.e. which deviate from the Law / Practice applicable to inventions which are not CII? If yes, please explain. 8 Does the Law / Practice in your jurisdiction contain any specific requirements as to sufficiency of disclosure and/or enablement which are applicable to CII, i.e. which deviate from the Law / Practice applicable to inventions which are not CII? If yes, please explain. Page 3 of 8

4 9 Do courts and administrative bodies in your jurisdiction apply the Law / Practice for patentability of CII in your jurisdiction in a harmonized way? If not, please explain.. As the court decisions in Turkey are not accessible to everyone, in pursuant to the information to the best of our knowledge and obtained from the relevant experts; no action for nullity or infringement for computer implemented inventions have been filed up to this time and no judgments rendered in this respect. As the source of the practices and applications of Turkish Patent and Trademark Office related to the patentability of computer implemented inventions is the practices of EPO and the resolutions rendered by EPO Board of Appeals, in the event of a prospective lawsuit, assessment shall be done by taking into consideration the resolutions rendered by EPO Board of Appeals accordingly. II. Policy considerations and proposals for improvements of your current Law/Practice 10 Is the current Law/Practice in your jurisdiction regarding the patentability of CII considered by users of the patent system and practitioners to be understandable and workable? If not, please explain. 11 Does the current Law/Practice in your jurisdiction regarding patentability of CII provide appropriate outcomes, in particular from an economic perspective? If not, please explain. 12 In your jurisdiction, is copyright protection of CII regarded as sufficient from an economic standpoint? Please state why in either case.. Copyright protection is mostly intended for protecting the individual interests; and cannot provide sufficient protection as it does not protect any function in technical terms and therefore the protection remains insufficient when assessed for the industrial point of view. As the aforementioned protection is not subject to any review criteria and only based on statement, this protection scope can be easily bypassed with even a slightest alteration to be performed on the software. This situation not only influences the investments to be done in this area but also the deterrence of reproduction; therefore, it is not possible to be evaluated favourably compared to the patent protection in economic terms. 13 Alternatively, is there an explicit or implicit consensus that patent protection of CII is required to ensure sufficient reward on investments made into the development of CII? If yes, please explain. Page 4 of 8

5 14 In your jurisdiction, is there an implicit or explicit consensus that availability of patent protection should be limited to contributions from certain areas of human endeavour, excluding contributions from all other areas of human endeavour, no matter how advanced these contributions? III. Proposals for harmonisation 15 Do you consider that harmonisation regarding patentability of CII is desirable? If yes, please respond to the following questions without regard to your Group's current Law/Practice. Even if no, please address the following questions to the extent your Group considers your Group's current Law/Practice could be improved.. The approaches and considerations of the United States and China and European Union Countries with this regard in the upcoming days vary across each other. As the medium in where the computer implemented inventions are utilized is not feasible to be restricted and limited within the presence of Internet, it is considered that a harmonization is required in this respect. Thus, the pressure imposed by the European Institutions, just like in the regulation applied in the US, towards the restriction of the non-patentable area indicates the requirement for harmonization. 16.a Exclusion of non-patentable subject matter per se. Should there be any exclusion from patentability per se of subject matter relating to CII? In this context, per se means that the non-patentable subject matter has to be identified without any implicit or explicit examination of the contribution to the state of the art the claimed CII makes. If yes, please answer questions 16.b-16.e, if no, please go to question 17.a 16.b Please describe the subject matter that should be excluded from patentability per se and explain in detail how it should be identified in practice. The main purpose of the exemption of patentability related to the computer implemented inventions should be to prevent the infringement of a claim by a mental act. According to this, only subject matters in which the utilization of a hardware (for instance; a processor or memory unit) is not compulsory shall be excluded from the patentability. 16.c If there is subject matter identified in a patent claim related to CII you consider should be excluded from patentability per se, should it possible to overcome a rejection of the patent claim by adding other subject matter to the claim? If yes, please answer questions 16.d-16.e, if no, please go to question 17.a Page 5 of 8

6 16.d Should such other subject matter be required to have a certain quality, e.g. should it need to be inventive? Please state why in either case., on condition that other subject matter takes place among the patentable subject matters. Accordingly, if the teaching obtained by combining the subject matter, excluded from patentability, and other subject matter creates a further technical effect or even non-technical effect, excluding those serving to a business method, and if the solution that such teaching offers is not obvious to the skilled person in the art, then the other subject matter need not be inventive on its own. 16.e If yes to question 16.d above, please describe the areas of human endeavour to which such other subject matter should relate. Other subject matter should relate to the areas of human endeavour which are somehow listed in the International Patent Classification System and in which the utilization of a hardware is compulsory, i.e. not optional, to implement the solution that the other subject matters offers. 17.a Requirement of a contribution in a field of technology. Should the examination of subject matter eligibility of CII involve an examination of the contribution the claimed CII makes to the state of the art? If not, please explain. If yes, please answer questions 17.b-17.e, if no, please go to question b Should such examination be made under a test specific to CII, or should it be part of the usual novelty and inventive step/non-obviousness test? Please state why in either case. Please state why. This examination should be a part of the general novelty and inventive step test. In the event of applying a new test specific to the computer implemented inventions, the requirement for the development of additional examination criteria shall be emerged for inventions related to other fields of the art. 17.c Under this test, should patentability of CII require a contribution from areas of human endeavour which are deemed to be sources of patentable inventions (e.g. engineering, natural sciences)? In other words, should contributions from areas of human endeavour which are not deemed to be sources of patentable inventions be disregarded? If not, please explain. If yes, please answer questions 17.d-17.e, if no, please go to question 18 Page 6 of 8

7 . As there is a requirement for the invention to provide a technical solution to a technical problem, the contributions done to a field that is not related to art, it is required not to take them into consideration no matter how advanced their levels are. 17.d Should this test also require that the relevant contribution the CII makes to the state of the art qualifies as inventive/nonobvious? This additional test may be integrated into the general inventive step / non-obviousness examination, or may be a stand-alone test. Please state why in either case.. The contributions done to the technical field are required to have the characteristics of an invention. When performing the assessment for inventive step, if any, the synergy which the non-technical components create together with the technical components should also be taken into consideration. This test should be integrated with the inventive step test. 17.e Should there be a non-exhaustive list of areas of human endeavour which are accepted as sources of patentable CII, taking into account the ultimate purpose of patent law (protecting unforeseen, non-obvious subject matter)? If yes, please provide such a list. If not, why?. Such list should not exist in order not to exclude the technologies that do not currently exist out of the scope. 18 Should there be any specific claim drafting or other formal requirements which are applicable to CII, i.e. which deviate from the rules or practice applicable to inventions which are not CII? Please explain why in either case.. While the claim is written for ensuring the determination of a claim exclusively including computer programs and including as a component, the technical character of the invention should be written as distinctive. As it cannot be completely described what the technical character is, if it presents a tangible physical change then it is considered that it has a technical character. For the sake of disambiguating that reason and this tangibility, it should be given place to at least one hardware and the field of the art in which it contributes should be stated. 19 Should there be any specific requirements as to sufficiency of disclosure and/or enablement which are applicable to CII, i.e. which deviate from the rules or practice applicable to inventions which are not CII? Please explain why in either case. Computer implemented inventions shall not be handled differently than the inventions that are not computer implemented and shall not be subjected to a different and specific rule or practice. The relevant article of the Statutory Decree related to the Computer Software that are excluded from the scope due to their non-invention qualification and together with the new Industrial Property Law that is recently effectuated, it is seen that the invention takes place in the Article apart from the patentability provided that it is only related with the subject or activities of Computer Programs. Page 7 of 8

8 20 Please comment on any additional issues concerning patent protection of CII your Group considers relevant to this Study Question. Please indicate which industry sector views are included in part "III. Proposals of harmonization" on this form: Automobile Industry, Household Appliances Industry Please enter the name of your nominee for Study Committee representative for this Question (see Rule 12.8, Regulations of AIPPI). Study Committee leadership is chosen from amongst the nominated Study Committee representatives. Thus, persons not nominated as a Study Committee representative cannot be in the Study Committee leadership. Ayse Ildes ERDEM (Ayse.Ildes@bshg.com) Page 8 of 8