Software patents under TRIPs Agreement

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The WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs Agreement, and particularly its Article 27, and whether software and computer-implemented inventions are considered as a field of technology are important elements in the discussion of the international legal framework of the patentability of software, since TRIPs Agreement is binding on all members of the WTO.

1 Article 27 of the Agreement
2 Relation with copyright protection
3 See also
4 External links

Article 27 of the Agreement

Article 27 paragraph 1 of the TRIPs Agreement 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 [1]:

"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 isnt. 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. In the meantime, its relevance for patentability in the domains of, for example, computer-implemented business methods, computer science and software information technology remains uncertain. 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.

Relation with copyright protection

Under the terms of the TRIPs Agreement, a computer program has to be protected by copyright. Indeed, Article 10 paragraph 1 of the TRIPs Agreement states that

"Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971)."

Article 10 paragraph 2 of the TRIPs Agreement 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."

Similarly the WIPO Copyright Treaty (WCT), although not binding on WTO members that have not joined the WCT, states, in its 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."

Authors' exploitation of these rights is protected by Article 13 of TRIPs (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".

Proponents which claim that there is no conflict argue this way:

These provisions do not explicitly exclude that inventions in the field of computer science for instance may be protected by patents, by virtue of a member state's legal provision. Copyright law is not necessarily incompatible with other forms of exclusive rights, as is evident, for example, in the fact that industrial designs may be protected both by industrial design rights (in some countries called design patents) and by copyright on works of applied art. Similarly, a logo can be protected by both trademark law and copyright law if the requirements of both laws are satisfied.

Opponents respond to that with:

The example with the logo is not a good comparison because it is about the interaction between Copyright and trademark and not about Copyright and patents. On the argumentation with the "industrial design copyrighted art": The difference to software is that the industrial design drawings will look similar to the copyrighted art, the scope of protection will only be slightly broader. For software, the patent can cover independent creation in an entirely different product or market. It all depends how you define "invention" and "technology", if you mean invention in the sense of constituting a new teaching to the way physical effects are employed to achieve a useful end then there is no conflict between the regimes. If however by "inventions in the field of computer science" you mean logical and mathematic discoveries in information processing then these are not inventions but programs and as intellectual creations, they are not suitable subject matter for patents.

Proponents of software patentablity say:

Relying on Article 13 TRIPs as an argument against software patents is based on a misconception: copyright may be used as protection for software, and software patents may be used as protection for an invention that is implemented by means of software. However, neither copyright nor a patent grants a positive right to exploit your own software; they just prevent others from using (the technical invention implemented by means of) your software.

Opponents answer:

The previous argumentation is based on an extreme interpretation of 'copyright law' as negative right and not what is written in Treaties: Copyright is both a positive right to exploit your own work and a right to restrict others from exploiting it, it must balance freedom of information and expression for the author and the public with restriction, not least because it relates to information entities and freedom of information and expression which are fundamental human rights. A patent, by contrast, is only negative – a right to forbid others from making or using without permission. Copyrights have since their inception in the Statue of Anne as an incentive to promote publication to benefit the public learning and must be seen in part as a right to "publish and vend". The U.S. Constitution actually requires publication as a prerequisite for copyright. A copyright owner should always be able to use his own intellectual creation the way he wants, of course subject to national laws, e.g. on censorship or morality.

Proponents say:

Article 13 TRIPs ensures that exceptions on your right to prohibit other people from using your copyright are limited;

Opponents answer:

This sentence is flawed because it is not based on what is written only an assertion about 'copyright law' as a concept (and the concept of copyright as purely a negative property right is by no means universally shared even amongst lawyers), if one can 'authorize' certain actions as is spelt out in Berne, at one point there must be a point where you can exercise those actions yourself within reasonable provisions of censorship. It would be impossible to obtain reward for your work if copyright was only a right to prevent others from performing certain actions without empowering publishing, and more seriously it would become an information monopoly device with no benefit to society. Article 13 reads: Members shall confine limitations or 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 right holder. These rights include the rights to authorize publication and performance. So what it says is that Members must confine limitations to the rights reserved to copyright holders to authorize certain actions in order to extract value from their work as is only fair.

Proponents say:

Article 30 TRIPs fulfils the same purpose as regards patents.

Opponents counter:

No, it leaves a door open: Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties. The right to exercise the copyright prerogative without getting sued for your own work is such legitimate interest.

Proponents say:

Whether you are allowed to use your own software depends on laws (the use of software for copying protected media may be prohibited by law) and on whether other people have earlier rights (if your software infringes somebody else's earlier copyright or patent, you may only use your software if you have obtained a license from that somebody else).

Opponents counter:

Censorship is a red herring because there are special provisions for censorship in the Berne Convention which makes this exempt from any exclusive right test, however most people don't believe that patent offices should constitute a "competent authority" for exercising such a function. The author's exclusive rights are not diluted by censorship but they are when patent holders enter the fray. Copyright is also not a good comparison, you have control over your original work and your right since you cannot infringe with an independent creation there is no such collision of rightholders. In a patent system, authors have no control, anybody can threaten to sue them and they cannot prevent it. It becomes impossible to write software without risking patent infringement since necessary incidents to the art have been claimed as processes. Essentially this is what goes to the core discussion in the Software patent article.