Software Patents Under Turkish IP Law

Oguz Erkan, LL.M.

There is a common misconception that software is not patentable. This is false. Although software itself cannot be subject to a patent claim, it can still be patented if it satisfies some conditions.

1. Patentability of Software Programs

In the dynamic realm where software intertwines with our daily lives, questions about the patentability of software-related inventions often arise. Contrary to common misconceptions, the answer is a resounding "yes" — it is indeed possible to protect inventions implemented by software through patents. However, this process comes with a crucial condition: the software must address a technical problem, aligning with the criteria applicable to inventions in other technical fields.

Historically, software has faced challenges in being perceived as non-technical and abstract. Yet, the contemporary landscape reflects the integral role of software in diverse facets, from mobile phones and cars to personal assistants like Amazon's Alexa. To assess whether a software-related invention is eligible for patent protection, two key questions emerge.

2. general Conditions Required to Patent a Software

Firstly, does the software enhance the computer's functionality? Improved memory allocation, efficient processing, heightened security against hacking, or enhanced display quality are examples that signal patent-worthiness. Secondly, does the software contribute to the improvement of a technical process? For instance, software controlling an insulin pump may qualify for a patent if it enhances precision in predicting insulin needs or ensures more accurate dosages.

Even in cases where both questions receive a "no," filing a patent application remains a strategic move. The mere presence of the application can create uncertainty for competitors, potentially complicating their endeavors while the application is pending. This proactive approach allows inventors to establish a customer base and brand, even if the patent may never be enforced.

The complexity arises in drafting patent claims, as direct claims to software itself are not currently allowed. Instead, effective patenting involves framing claims around the computer system and processes it performs. Examples include claims related to a configured computer, a computer-implemented method, or a computer-readable medium that configures a computer for specific actions.

3. Software Patents Under Turkish Law

In accordance with Article 82 of Law No. 6769 on Industrial Property ("IP Law"), it is essential to clarify that, as a general rule, computer programs/software cannot be patented solely for themselves. According to this provision, a patent application will not be considered inventive if it relates only to the method of operation or the computer program/software itself, as they are deemed to lack inventive character, primarily due to the fact that computer programs do not inherently contain technical features or provide a technical solution to a technical problem.

However, similar to the practice in Europe, the patentability of software in Turkey is possible under one condition: the transformation of software into a computer-based form. Given this condition, it is necessary to explain the fundamental conditions for obtaining a patent for software in Turkey.

To constitute a patentable invention, a software must:

(a) Be computer-based, involving technical elements such as a computer, mobile phone, database, server, processor, memory, etc.

(b) Have a technical character, meaning that the contribution of the invention to the prior art must be technical. Technical character is defined as relating to any technical field, solving a technical problem, and the claims having technical features, as summarized in Articles 42 and 43 of the European Patent Convention ("EPC") Examination Guidelines.

(c) Exhibit an inventive step, particularly in the context of software, where the additional feature that makes the invention different must create an advanced technical effect. For example, if a computer program generates an electrical current upon installation on a computer, this is considered the initial technical effect specific to the computer program and is not taken into account. In such cases, patentability is contingent on the ability of the invention to create a second technical effect.

4. Patent Evaluation Procedure for Software in Turkey

The Turkish Patent and Trademark Office follows a procedure similar to the one described below for the assessment of computer-based inventions and business methods:

If only technical elements are present in the claims (even if the specification includes a business method), the application is not considered a business method, and the regular application procedure is applied.

If both the claims and the specification include only non-technical elements (i.e., no technical character is present), an investigation report is not issued under Article 96(3) of the IP Law. Instead, the applicant is given three months to submit objections or changes. If no objections are raised within this period or the objections are not accepted, the application is rejected. If objections and changes are accepted, an investigation report is issued. (The likelihood of accepting changes in such applications is quite low, as Article 103 prohibits exceeding the scope of the application.)

If only non-technical elements are present in the claims, but the specification includes technical elements, the procedure described in step 2 is applied, and no report is issued. It may be advisable to include the technical features from the specification in the claims. If technical elements are added to the claims, the procedure continues to step 4.

If both technical and non-technical elements are present in the claims, and the claims have technical character, the following procedure is applied:

a. Identify the technical elements in the claims, which are considered in the inventive step assessment.

b. Examine whether the remaining non-technical elements in the claims have a technical effect on the technical elements or solve a technical problem. If there is no interaction or contribution to the solution, the non-technical part is not considered in the inventive step assessment.

c. If the technical elements do not fall under the criteria in point c. mentioned above, a comprehensive investigation is conducted for the inventive step assessment. If the non-technical elements contribute to the technical elements, this contribution is taken into account.

In light of these explanations, software, when integrated into a specific device or system as a technical element, possesses technical character and can be patented if the unique features making the invention different create an advanced technical effect.

5. Conclusion

In essence, while software per se is not directly patentable, the strategic drafting of patent claims unlocks the potential to protect software-related inventions. Collaborating with a knowledgeable patent attorney is crucial, as they can navigate the intricacies of patent law and adapt to its evolving landscape. By focusing on the functionalities of the software-related invention, inventors can leverage patents to safeguard their innovations, contributing to the ongoing evolution of the software patent landscape.

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