New examiner guidelines for software-related inventions

On 15th March 2012 the Israeli patent registrar has issued new guidelines to determine patentable inventions by clarifying the definition of "technological invention", as defined by Section 3 of the Patent Law. Until recently, software inventions were treated according to case law, which did not provide clear guidelines and was interpreted differently by different examiners. This resulted in applications being treated differently, making it practically impossible for an applicant to predict whether its application would be accepted.

The long-awaited guidelines clarify the Israeli approach regarding software inventions in an attempt to make all Israeli examinations consistent. The guidelines are far more convenient for applicants than the Patent Office's previous practice to date, and represent an attempt to address the fact that Israel is a leading authority in high-tech and software-related innovation.

According to the new guidelines, a claim will be considered as a whole when determining technological inventions and will not be separated into features for such determinations.

In order to be considered a patentable invention, the claimed process or system should comprise a concrete technological character or a concrete technical result. The guidelines refer to Decision G0003/08 of the Enlarged Board of Appeal of the European Patent Office in order to define a "concrete technological character". This is also an attempt to make the new Israeli guidelines compatible with the European approach.

A computer program by itself is not considered a "technological invention". In order to have a concrete technological character, the claimed invention should do at least one of the following:

• Have a concrete effect on the physical operation of a computer, in addition to the regular operation of the computer or system in which it is embedded.
• Change the physical operation of the computer or system, for example by changing its speed or reliability or making its storage space more effective.
• Establish new communication relationships between components of the system.

The guidelines include examples of claims and the way in which the guidelines would be implemented for such claims. The examples illustrate that inventions concerning business methods, information display, mathematical calculations (eg, for image processing) and even data analysis can be patented if they are linked to a concrete technical aspect, such as improving a computer's operation or defining communication relationships between components of the system.