Monday, 31 March 2014

Software Patents on Trial - will the USSC finally provide clarity? Part 2

The United States Supreme Court (USSC) is today hearing oral arguments in Alice Corp v. CLS Bank, with a decision expected in the summer. In a previous post (here), a bit of background is given to stress the importance of this case to software patents and to the ICT industry generally.

African/European readers may be asking, who cares what the USSC says about software patents (other than people/companies/courts in the US)?

By far, the US has the most relaxed attitude toward software patents, and the US patent office grants more software patents than any other office. If the US suddenly reverses course and severely curtails the scope of allowable subject matter in software-based inventions (and potentially invalidates many existing software patents), courts and patent offices around the world will take note. Some countries (e.g., New Zealand) may use the decision to strengthen their efforts to eliminate such patents altogether.

The US Federal Circuit has made a mess of patent-eligibility of software patents (see Patently-O here), and the Europeans have done little better (see the excellent IPKat post here). Readers are invited to comment on other countries (Japan, anyone?), but it seems safe to say that patent laws were not devised with software in mind, and the courts just haven’t yet figured out what to do about that. Courts, legislators, companies, and others around the world are surely hoping for some clarity on the matter, and there is no better place to start than the highest court in the land where software patents have been traditionally welcomed.

Clarity from the USSC would bring a new perspective into the debate about the benefits of software patents in African countries.
When it comes to uncertainty,
Heisenberg said it best

In Kenya, perhaps surprisingly, a change in the patent law in 2001 opened the door for a very liberal interpretation of patent-eligibility of software. Pre-2001, the Kenyan patent law (like most countries) specifically excluded software. The new patent act of 2001 lacked this exclusion, but notably maintained other patentability exclusions. The only rational conclusion is that software is not excluded from patentability.

Indeed, the Kenyan Industrial Property Institute (KIPI, the Kenyan patent authority) has been issuing software patents.  See, for example, KE000608 (claiming “A security server arranged to set up communication between a merchant device and a customer payment application”) or KE000441 (from Nokia, claiming “A method of providing user plane traffic during a state of inactive user plane of a connection to an access network”).

ARIPO has also been issuing software patents. See, for example, AP2682 (directed to “a system for facilitating the initiation and/or conclusion of an insurance contract”) or AP2668 (from Nokia and directed to “a new method, system, apparatus and software product for dynamic gating of an uplink (UL) control channel”).

Hoping for Draconian?
So what happens if the USSC decides that the Alice Corp. software-based patent claims are not patentable? Litigation involving software-based patents is rare in Africa (do readers know of any?), but it’s not hard to imagine a Kenyan court relying on the USSC to hold similar patents unenforceable.

On the other hand, patent attorneys tend to fashion themselves as cleverer than the courts, or perhaps they are simply desperate dedicated to find solutions for their clients.  Whatever the case, it seems unthinkable that the USSC will be able or willing to go so far as to completely eliminate all avenues for protecting software based inventions. It was earlier court decisions that caused patent drafters to use such absurd creative wording as “a computer readable storage medium.” Most likely, and unless we receive a truly draconian holding in CLS Bank, patent drafters will continue to write software patents with wordings that are carefully tailored to be compliant with this and other USSC decisions.  

1 comment:

paulasiimwe said...


Thanks for that update. It is worth watching. Uganda has a similar regime to Kenya's under the 2014 Industrial Property Law. S.8 (3) which spells out matters excluded from Inventions does not include software. The closest reference to software would be pharmaceutical test data, until 2016. The other provision on non patentable inventions is s. 13 which only spells out plant varieties as well as inventions contrary to public order, safety and related matters.

The view is that creators of software may want to exploit as much space as possible available under Copyright protection, especially in Jurisdictions such as Uganda where Copyright is registrable.