Law - Computer Program

PCT rules stipulate that no International Searching Authority is required to search and no International Preliminary Examining Authority is required to examine an international application if its subject matter is "computer programs to the extent that the International Search Authority is not equipped to search prior art concerning such programs" (PCT Rule 39.1" and "to the extent that the International Preliminary Examining Authority is not equipped to carry out an international preliminary examination concerning such programs" (PCT Rule 67.1). National and regional patent offices prohibit the patenting of computer programs in the abstract. For example, USPTO rules state that "Since a computer program is merely a set of instructions capable of being executed by a computer, the computer program itself is not a process and Office personnel should treat a claim for a computer program, without the computer-readable medium needed to realize the computer program's functionality, as nonstatutory . . . " (MPEP 2106). EPO rules state "A computer program claimed by itself or as a record on a carrier, is not patentable irrespective of its content. . . . If however the subject-matter as claimed makes a technical contribution to the known art, patentability should not be denied merely on the ground that a computer program is involved in its implementation."

It is important to note that many, if not all, jurisdictions grant patentability to some computer-related inventions, but not to computer programs that are claimed as abstract sets of instructions. Patent Partner uses the term "computer program" in the latter way.

Because one of the primary advantages of filing an international application is that a thorough search and preliminary examination will provide some assurance that national applications will be successful, an applicant may be well advised not to file an international application if the subject matter falls into the above areas. If the USPTO ISA or IPEA conducts the international search or preliminary examination, however, it will search and examine all subject matter searched and examined in U.S. national patent applications.

The position of the USPTO on this issue (in the role of the ISA or IPEA) is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP):

MPEP 1843 - The International Search
MPEP 1849 - Subject Matter Excluded from International Search
MPEP 1874 - Determination if International Preliminary Examination is Required or Possible

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