Computer programs and the Patent Cooperation Treaty
|Computer programs, software and
There are two provisions in the Regulations  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  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.
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. 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.
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.
The Patent Cooperation Treaty (PCT) is an international patent law treaty, which provides a unified procedure for filing patent applications. A patent application filed under the PCT is called an international application or a PCT application.
The filing of an international application results in an 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. An applicant may also request an international preliminary examination performed by a patent office. The PCT does not provide that the searches and examinations are to be performed by one central patent office, as the WIPO does not perform searches and examinations. In contrast, the European Patent Convention (EPC) places the European Patent Office (EPO) in charge of performing searches and examinations for European patent applications.
Under the PCT, the international search and the optional international preliminary examination are conducted by different national or regional patent offices, referred to as the International Searching Authorities (ISA)  and the International Preliminary Examining Authority (IPEA)  Applicants, based on nationality and on the Receiving Office where the application was filed, may have an opportunity to have the search performed by one of the ISAs.
The relevant provisions in the Regulations
The Regulations under the PCT do touch on the search and examination of computer programs.
"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)
"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.
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 use 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 claims. 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:
"[The 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." 
Rule 39.1 PCT is 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. 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."
In the judgment in CFPH LLC's Applications, Peter Prescott referred to Rule 39.1 PCT when discussing the motivation behind the exclusion from patent protection of programs for computers under UK law. He commented that, at the time the EPC was under consideration (during the 1970s), "it was felt that searching the prior art would be a big problem" and that "Rule 39(1) of the Patent Co-operation Treaty recognised that an International Searching Authority might not be suitably equipped".
Consequences on national and regional phases
These provisions have no legal consequence as regards the patentability in national or regional patent offices designated  in a PCT application, as the law of most national or regional offices  requires that they draw their own conclusions based on their own national or regional patent law. This is in complete compliance with the PCT since Article 27(5) PCT provides that, as far as substantive conditions of patentability are concerned, national and regional patent laws prevail:
"Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. (...)"
References and notes
- 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
- "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.
- 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, Study Contract ETD/99/B5-3000/E/106, report to the European Commission by R Hart, P Holmes, J Reid, 2000.
- Article 16 PCT
- Article 32 PCT.
- 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.
- 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.
- 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 Rule 45 EPC [needs update] .
- 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.
- 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.
- CFPH LLC's Application  EWHC 1589 at para. 35, note 15
- ... or elected ...
- The four regional patent offices are the European Patent Office (EPO), the Eurasian Patent Office (EAPO), the African Intellectual Property Organization (OAPI) and the African Regional Intellectual Property Organization (ARIPO)