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There are two provisions in the Regulations 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 (). annexed to the Patent Cooperation Treaty (PCT) that relate to the search and examination of Patent Application s concerning ''' Computer Program s'''. 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 and examining 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. "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." These two provisions are and , and, in conjunction respectively with and , may have a concrete impact on the procedure under the PCT, in the search and examination performed under the PCT. "''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'' , Publications, Robic web site. 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. 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. 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''". In addition to the consequences these legal provisions may have in practice, is also significant from an interpretive perspective to understand the origin of the much debated (see by R Hart, P Holmes, J Reid, 2000. BACKGROUND The Patent Cooperation Treaty (PCT) is an international patent law Treaty , which provides a unified procedure for filing Patent Application s to protect inventions. A patent application filed under the PCT is called an international application or PCT application. The filing of an international application results in a search, called the international search, performed by a Patent Office (accompanied with a written opinion regarding the patentability of the invention which is the subject of the application) and, optionally, an examination, called the international preliminary examination, also performed by a patent office. The PCT does not provide that the searches and examinations are performed by one central patent office (the WIPO does not perform searches and examinations). This is in contrast for instance with the procedure under the European Patent Convention (EPC), which provides that the European Patent Office (EPO) is in charge of performing all searches and examination for all European patent applications. Under the PCT, the international search and the international preliminary examination, which is optional, are conducted by different national or regional patent offices, formally called respectively International Searching Authorities (ISA) and International Preliminary Examining Authority (IPEA) . Applicants, depending on their nationality and on the patent office at which the application was filed, i.e. the Receiving Office, may have the opportunity to opt to have the search performed by one of a group of ISAs. THE RELEVANT PROVISIONS IN THE REGULATIONS The Regulations under the PCT do touch on the search and examination of computer programs. Decision T 164/92 of the Board Of Appeal 3.5.1 Of The European Patent Office , April 29, 1993, Reasons 8.3. (English translation). Published in Official Journal 1995, 305. states that :"No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following: :(...) :(vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs." (emphasis added) states that :"No International Preliminary Examining Authority shall be required to carry out an international preliminary examination on an international application if, and to the extent to which, its subject matter is any of the following: :(...) :(vi) computer programs to the extent that the International Preliminary Examining Authority is not equipped to carry out an international preliminary examination concerning such programs." (emphasis added) According to the Board of Appeal 3.5.1 of the EPO, these provisions mean that the ISA and IPEA authorities are not required to carry out searches or preliminary examinations in respect of programs if, for example, they have no examiners trained to do so or are not equipped with appropriate search material. The Board went on to say: :"However, it is not to be inferred from these rules that searches or examinations in the software field are to be ruled out in international authorities. On the contrary, it seems (...) that according to the PCT searches and, if applicable, examinations of this type can and may very well (perhaps even should) be carried out if the competent authority is appropriately equipped." These provisions deal only with the international searches and international preliminary examinations and not with the national and regional searches or examinations. Generalisation of "''The aforementioned rules deal only with the international search and international preliminary examination and therefore not with the regional European search or examination.''" in Decision T 164/92, Reasons 8.4. PRACTICES BY ISA AND IPEA The different ISA and IPEA have made use of the legal provisions of Articles 17(2)(a)(i) and 34(4)(a)(i) PCT in conjunction with Rules 39.1 and 67.1 in a different manner. In addition, as mentioned above, the ISA and IPEA that have made used of these provisions have diverging practices with respect to determinations of exclusions as to computer programs. For instance, the European Patent Office (EPO), acting as ISA and IPEA, is not be obliged to search, by virtue of Article 17(2)(a)(i) PCT, or examine, by virtue of Article 34(4)(a)(i) PCT, any international application to the extent that the EPO considers that such application relates to subject matter which does not comply with the provisions of the European Patent Convention to such an extent that it is not possible to carry out a meaningful search into the State Of The Art on the basis of all or some of the Claim s. Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization in relation to the functioning of the European Patent Office as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty , Done at Geneva on October 1, 1997, (as in force from April 1, 2006), Article 4 ("''Subject Matter Not Required to Be Searched or Examined''") and Annex B ("''Subject Matter Not Excluded from Search or Examination''"), and . The EPO acting as ISA or IPEA in the PCT procedure is therefore not obliged to search or examine some PCT applications when not equipped to do so. ORIGIN AND INTERPRETIVE SIGNIFICANCE OF THE PROVISIONS The computer program exclusion of Rule 39.1 PCT, which originally appears to be for "equipment" reasons, dates from 1969 : :" subject matter for which the International Searching Authority is not required to search includes mathematical and scientific theories, plant and animal varieties except for microbiology, ornamental designs. It also includes computer programs but only to the extent that the International Searching Authority is not equipped to search prior art concerning such programs." PCT/DC/3 July 11, 1969 (Original: English) BIRPI Main Differences Between the 1968 and 1969 Drafts in ''Records of the Washington Diplomatic Conference on the Patent Cooperation Treaty'', 1970, ''Conference Documents'' , item 32. Rule 39.1 PCT is significant from an interpretive perspective to understand the origin of the much debated (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. However, while the PCT condition for excluding computer programs is a question of equipment, the EPC condition is a question of "computer program as such". According to some, the fact that the PCT does not deal directly with the scope of Patentable Subject Matter , in relation to computer programs, adds "weight to the contention that, having been born out of administrative inconvenience rather than any great principle, restrictions on patentability of programs should be limited to the maximum possible extent."Gary Lea, '' The Revolution That Never Was: A Cynic's Eye View of the Software, Business and E-Commerce Method Patenting Controversy in the Wake of ''State Street'' '', Digital Technology Law Journal, 2000, Volume 2 No. 1, item 61. |
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