News Patents and designs 2000

Software IP protection in Italy

The present situation, particularly in the light of EPO decisions on IBM cases.
January 05, 2000

A. Protection according to Patent Law

1. The Convention on the Grant of European Patents (EPC: European Patent Convention), signed on 1973, explicitly provides that computer programs are not patentable. In particular, Art. 52(2)(3) establishes that computer programs, as such, shall not be regarded as inventions.

2. On the basis of the European Patent Convention, the national laws of all the contracting states have been harmonised. In particular, in Italy the Legislative Decree of May 26, 1978, No. 260, which was a legislative framework authorising the ratification of EPC and establishing the general principles of the matter, set forth that such harmonisation had to eliminate any difference of treatment for national patent Applicant (Art. 6). In other words, the present Italian Patent Law, which is substantially in accordance with the wording of EPC, has also to be interpreted accordingly with EPC.

With reference to the rule against software patentability, Art. 12 of the Italian Patent Law literally reproduces Art. 52 of EPC.

3. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), signed in Marrakech on April 15, 1994 (ratified by Italy with Law of December 29, 1994), reduces the boundaries of the prohibition for software patentability, since its Art. 27 establishes that the obtainment of patents and the enjoinment of the related rights are not subject to any discrimination on the basis [...] of the technological field.

In other words, the TRIPS Agreement asserts the patentability of any inventions wich are new, involve an inventive step and are susceptible of industrial application, with no discrimination for any kind of technology.

4. Many countries in the world have consequently taken measures according to the TRIPS Agreement. In particular, United States, Japan and South Korea have explicitly granted the principle of patentability of software inventions.

5. Presently, the opinion in favour of the patentability of software inventions is gradually being asserted in Europe.

Such opinion, taking into account the TRIPS Agreement signed by the EPC contracting states, is based on the restrictive interpretation of the prohibition established by Art. 52(2)(3) of EPC, according to which only a computer program considered without any reference to the context of use is definitely deemed as not patentable, since it lacks in technical nature, i.e. it is abstract, although it is susceptible of industrial application..

6. This is the context where two very recent decisions of EPO Boards of Appeal took place. These already famous decisions were given on July 01, 1998 and February 04, 1999 in relation to two Patent Applications owned by IBM, according to which a computer program claimed by itself may be patentable, provided that it is characterised by a further technical effect which goes beyond the normal physical interactions between the program (software) and the computer (hardware) on which it is run.

Therefore, a software as such is not patentable, since it is considered as a mental act; but, in case it provides a technical contribution which goes beyond the mere execution of abstract instructions, then the patentability of such a software shall be recognised.

7. Since Art. 52 of EPC explicitly provides that computer programs as such are not patentable, the wording of the above EPO decisions is sometimes cryptic, but the meaning of the above EPO decisions is clear, allowing patentability for software.

In order to make clear also the wording of EPC, the President of the EPO has proposed, on March 09, 1999, a modification to Art. 52 of EPC so as to remove the prohibition against patentability of the subject matters listed therein, including software, and to literally reproduce Art. 27 of the TRIPS Agreement.

To this end, a Diplomatic Conference will be held by the contracting States of the European Patent Convention in November 2000.

8. Due to the substantial literal and interpretative uniformity between national patent laws and EPC, the present EPO orientation in favour of software patentability shall not delay in asserting also in the individual EPC contracting States.

Therefore, it may be assumed that, even in Italy, nowadays it is possible to obtain patents for software inventions, provided that they have technical nature, i.e. they are technical solutions to technical problems.

For instance, software systems which may obtain patent protection comprise:

- software that implements a process to make a computer working through an improved resource management;

- software that controls a manufacturing process;

- software that accomplishes an automation process;

- software that realises a method of processing data representing physical entities, such as a digital image or an electric signal.

Obviously, in order to be patentable, such a software must furthermore meet the following requirements:

2) involving an inventive step, i.e. the concerned software has to have (at least) one characterising feature which qualitatively distinguish it over the state of the art, in order to be not obvious to a person skilled in the art;

3) being susceptible of industrial application, i.e. able to be used and/or produced in any kind of industry.

Presently, patentability remains not allowed for software not having a technical nature and implementing only schemes, rules and methods for performing mental acts or for playing.

B.Protection according to Copyright

1. According to the Italian Copyright Law No. 663 del 1941, as amended by Legislative Decree No. 518 of December 29, 1992, and ruled by Prime Minister's Decree No. 244 of January 03, 1994, a software is protectable under provisions established by Copyright.

In particular, what is protected by Copyright is the expression of the developed software, i.e. the listing of the computer program instructions (the particular implementation in a specific program language).

There exist two types of computer programs: published computer programs and not published ones.

2. In particular, computer programs are considered published when the exercise of rights of economical exploitation has begun.

Although the claim of moral rights and commercial exploitation rights on the program is not subject to any formality, but only to the publication of the work, the attribution of a certain and official date to such moment occurs through the registration of the work in a special register for computer programs, at the Italian Authors' and Publishers' Association (SIAE).

This is particularly in favour of the program owner in case of conflict since it reverses on the counterpart the burden of proving the priority of its right and keeps its effectiveness and enforceability until such event..

Such registration is carried out by filing at SIAE a complete copy of the program together with all its related elements/documents, provided that they are stored in an optical disk (CDROM), and a documentation comprising the data identifying the author(s) and the owner(s) of the rights of commercial exploitation and a short description listing and pointing out the features and the functions of the program.

The contents of the disk shall be examined only in case of litigation on demand of the judge, while the other information shall be available to the public..

3. Even not published computer programs, i.e. programs not yet commercially exploited (for which the author(s) or the owner(s) of the rights of commercial exploitation are interested to obtain an official certification concerning the date of creation of the program and the ownership of the related moral rights and commercial exploitation rights) may be protected by Copyright.

In fact, such programs are considered equivalent to unpublished works and may be registered in a special register at SIAE, stored on media of any kind which shall be filed together with an application comprising the data identifying the author(s) and the owner(s) of the rights of commercial exploitation and the elements identifying the program.

C.Conclusions

1. It is evident the larger extent of protection granted by a Patent compared to the one granted by Copyright: while the latter offers a protection limited substantially to the expression of creations, i.e., in the case of software, to the program code listing, a Patent protects the logic underlying the developed software, independently from the particular implementation in a specific program language.

2. However, considering that a plurality of protections grant a wider defence, it is advisable to obtain also Copyright protection for software inventions, taking furthermore into account the present lack of a consolidated line of court decisions in Italy in favour of software patentability.

 

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