The words "as such" make an exclusion meaningless. If "[software] as such" is excluded from patentability, patent offices will grant software patents. These words are so ambiguous that even organisations which are traditionally (or presumed to be) pro-software-patents, have criticised this wording.
The best-known example of a misused "as such" clause is probably the European Patent Convention, which excludes "programs for computers" from patentability, but the European Patent Office interprets the "as such" as nullifying the exclusion.
When IBM and Microsoft lobbied the New Zealand government in 2011 to allow software patents, they did so by asking for "as such" to be added to a clause which was supposed to exclude software patents.
Criticism from groups not opposed to software patents
European Patent Office
In the "G3-08" decision, published in May 2010, the Enlarged Board of Appeal of the European Patent Office wrote that:
A uniform understanding of where to draw the dividing line between applications relating to programs for computers as such, which are excluded from patentability under Articles 52(2)(c) and (3) EPC, and applications relating to patentable technical solutions, in the form of CIIs, still cannot be assumed despite considerable convergence in recent court rulings.
The Board concluded that resolving the ambiguity is the job of the legislator, not the courts:
harmonisation [...] can be taken up by the Enlarged Board only to the extent possible under the EPC, even if his suggestion might significantly advance the cause of legal uniformity in Europe. When judiciary-driven legal development meets its limits, it is time for the legislator to take over.
In 2010, the World Intellectual Property Organisation (WIPO) commissioned a report on "Computer Programs As Excluded Patentable Subject Matter". The expert concluded that "as such" was inherently ambiguous:
In some jurisdictions, early discussions focused on the meaning that should be given to the ‘as such’ proviso which states that the listed exclusions only apply to the extent that the alleged invention relates to that thing as such. Given the ambiguous nature of the proviso, it is not surprising that it lent itself to a number of different and sometimes conflicting styles of interpretation.
Australian Association of Lawyers
As noted by Guy Burgess,
Adopting an approach comparable to the EPC and UK Patents Act is also likely to lead to unpredictability, as an interpretation of the “as such” clause by the European Patents Boards of Appeal has that computer programs are only patentable if they produce a “further technical effect” so as to render the claim allowable under article 52 of the EPC… The EPO approach has often been criticised in Europe as giving rise to unpredictability in that jurisdiction. Considerable costs have been incurred in dealing with and attempting to avoid the exclusion that was imposed in 1977...
Countries with this clause
- European Patent Convention, and thus all the signatories
- South Africa
- Costa Rica
- ↑ See pages 6, 16, 17 (PDF pages 50, 60, 61) http://documents.epo.org/projects/babylon/eponet.nsf/0/DC6171F182D8B65AC125772100426656/$File/G3_08_en.pdf
- ↑ http://www.wipo.int/edocs/mdocs/scp/en/scp_15/scp_15_3-annex2.pdf (found as "Annex 2" of Experts' Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights)
- ↑ Guy Burgess writes that the quote is: "what the Institute of Patent & Trade Mark Attorneys of Australia said in their 2010 submission to the NZ Minister (and which was expressly endorsed by the Australian Federation of Intellectual Property Attorneys)"
- ↑ http://www.burgess.co.nz/law/patents-bill-the-embedded-software-solution/
- ↑ http://www.cipro.co.za/legislation%20forms/patents/Patent%20act.pdf
- ↑ http://www.wipo.int/wipolex/es/text.jsp?file_id=217604#LinkTarget_433