Computer programs and the Patent Cooperation Treaty

There are two provisions in the regulations^[1] annexed to the Patent Cooperation Treaty (PCT) that relate to the search and examination of patent applications concerning computer programs. These two provisions are present in the PCT, which does not provide for the grant of patents but provides a unified procedure for filing, searching^[2] and examining^[3] patent applications, called international applications. The question of patentability is touched when conducting the search and the examination, which is an examination of whether the invention appears to be patentable.^[4]

These two provisions are Rule 39.1 PCT and Rule 67.1 PCT, and, in conjunction respectively with Article 17(2)(a)(i) PCT and Article 34(4)(a)(i) PCT, may have a concrete impact on the procedure under the PCT, in the search and examination performed under the PCT.^[5] Indeed, depending on the patent office which is in charge of the search or examination under the PCT, the application filed for an invention relating to a computer program may or may not be searched or examined.^[5] In addition, the ISA and IPEA (see background section) that do not search such applications to a certain extent have diverging practices with respect to determinations of exclusions as to computer programs.^[6]

In addition to the consequences these legal provisions may have in practice, Rule 39.1 PCT is also significant from an interpretive perspective to understand the origin of the much debated Article 52(2) and (3) EPC (see Software patents under the European Patent Convention (EPC) and Article 52 EPC). The computer program exclusion was indeed inserted in the EPC in line with Rule 39.1 PCT, so that Rule 39.1 predates Art. 52(2) and (3) EPC.^[7]

^ The regulations annexed to the PCT provide rules complementing the main articles, notably concerning matters in respect of which the PCT expressly refers to the regulations or expressly provides that some rules in the regulations are or shall be prescribed (Article 58(1)(i) PCT).
^ Article 15 PCT
^ Article 33 PCT
^ "The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable." Article 33 PCT
^ ^a ^b "The international examination now being conducted by CIPO instead of EPO may also have repercussions given the position taken by CIPO regarding the patentability of certain kinds of subject-matter in comparison with EPO and other countries, such as the patentability of higher life forms, software and business methods." in Nadine Beauger, David Enciso and Luc Morin, Changes to the PCT System since January 1st, 2004 Archived 2007-02-26 at the Wayback Machine, Publications, Robic web site.
^ World Intellectual Property Organization, PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/1), Geneva, March 11, 2004, page 65, 9.15 "Computer Programs, to the Extent That the Authority is not Equipped to Carry Out Search or Preliminary Examination on Such Programs".
^ "It was only the second preliminary draft for a European Patent Convention dating from 1971 which explicitly excluded computer programs from patentability in line with Rule 39(1) PCT", Gunter Gall in a paper given at the OFDI Seminar on April 17, 1985 in Paris, cited in The Economic Impact of Patentability of Computer Programs Archived 2006-10-28 at the Wayback Machine, Study Contract ETD/99/B5-3000/E/106, report to the European Commission by R Hart, P Holmes, J Reid, 2000.

[1] The regulations annexed to the PCT provide rules complementing the main articles, notably concerning matters in respect of which the PCT expressly refers to the regulations or expressly provides that some rules in the regulations are or shall be prescribed (Article 58(1)(i) PCT).

[2] Article 15 PCT

[3] Article 33 PCT

[4] "The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable." Article 33 PCT

[ROBIC-5] "The international examination now being conducted by CIPO instead of EPO may also have repercussions given the position taken by CIPO regarding the patentability of certain kinds of subject-matter in comparison with EPO and other countries, such as the patentability of higher life forms, software and business methods." in Nadine Beauger, David Enciso and Luc Morin, Changes to the PCT System since January 1st, 2004 Archived 2007-02-26 at the Wayback Machine, Publications, Robic web site.

[PCT_Guidelines_9.15-6] World Intellectual Property Organization, PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/1), Geneva, March 11, 2004, page 65, 9.15 "Computer Programs, to the Extent That the Authority is not Equipped to Carry Out Search or Preliminary Examination on Such Programs".

[Gunter_Gall-7] "It was only the second preliminary draft for a European Patent Convention dating from 1971 which explicitly excluded computer programs from patentability in line with Rule 39(1) PCT", Gunter Gall in a paper given at the OFDI Seminar on April 17, 1985 in Paris, cited in The Economic Impact of Patentability of Computer Programs Archived 2006-10-28 at the Wayback Machine, Study Contract ETD/99/B5-3000/E/106, report to the European Commission by R Hart, P Holmes, J Reid, 2000.

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