ABSTRACT
Nowadays, it is seen that information technologies are accelerating rapidly due to many reasons such as increase in computer use, the need to establish communication in the world in a fast and effective way, and the fact that the activities to be carried out by people in many sectors are directed towards digitalization.
I. INTRODUCTION
Many new concepts and products/inventions such as software, databases, opensource codes have entered our lives, so much so that they have become widely used even in daily language. Even in our social lives, the majority of the digital items we use are software-based. It also entails unlawful actions like copying them and infringing the owner’s rights. Currently, no special protection has been arranged, apart from the regulations within the scope of the Law on Intellectual and Artistic Works No. 58461 (“Code No 5846”) on the protection of software. In addition, it is unclear whether the products in question can be protected within the framework of industrial property law, and if protection exists, how it will be protected. On the contrary, in the Industrial Property Law No. 67692 (“Code No 6769”), software is among the non-patentable products. In our study, it will be evaluated whether the software can benefit from the patent law protection in Code No 6769.
In today’s world, computers and smartphones enable us to easily perform many operations in all areas of our lives and has become a part of our daily lives. Accordingly, studies in this field have increased, and startup companies that develop software-based inventions have become important actors in commercial life. In the meantime, the protection of software has gained importance for the rights holders. In recent years, applications for software-based inventions have increased. So much so that the number of applications in the world has doubled in six years, and in our country, the number of applications has tripled in four years3. This raised the issues of software protection and right ownership, and how infractions and confusion will be judged in certain contexts. Because it is possible for the software creators to create products/ procedures serving the same purpose by using the same/ similar methods. In this case, it will be necessary to answer questions such as whether actions such as copying have been carried out, which product/ procedure was created primarily, and whether their differences and similarities are in the copying dimension. Again, it is not clear in what way the protection will be provided in case of malicious copying of the entire/ certain part of the software itself.
In Turkish Law, there are basically two regulations for the protection of intellectual products as Code No 5846 and Code No 6769. Protection of products subject to intellectual property within the scope of copyright is regulated in Code No 5846, and protection and scope of industrial property (trademark, patent, geographical indication, design, etc.) rights are regulated in Code No 6769. The “software” that constitutes the subject of our work are protected in the sense of copyright law if they meet the conditions of the work within the scope of Code No 5846. However, no protection is foreseen for the software under the Code No 6769. Because within the scope of Code no 6769; although there are exceptions for the protection of industrial property rights, protection is envisaged by the registration of the products/procedures under the categories such as trademark, patent, design, etc., at the Turkish Patent and Trademark Office (“The Office”). Although these protections have different terms and durations for trademark, patent, design titles. However, as a common goal, it is requested to determine the owner of the industrial property right, to register it in the registry, and to prevent third parties from benefiting from this industrial property right illegally and/or against consent. The registration process with The Office also ensures that the owner of the industrial property right becomes public.
When the protection organized within the scope of Code No 5846 is examined, it is remarkable that the owner of the work has the financial and moral rights arising from the work, together with the creation of the work. However, we would like to say that there is no compulsory registration system for works other than a few specific works such as movies and computer games. As with industrial property rights, an institution like The Office has not been regulated in Code No 5846. A registration certificate is issued by the Ministry of Culture and Tourism, General Directorate of Copyrights, after the owners of the works declare their will. These documents, however, are the ones that try to record the work without performing a similarity analysis or providing a thorough description of the work’s content. This causes problems in terms of identifying the owner of the work in terms of copyright law and protecting its rights (identification of the right owner, whether there is an existing violation due to the inability to determine the date of creation of the work, etc.).
The software that is the subject of our study, on the other hand, cannot benefit from the protection in the sense of Code No 6769, since it is not considered within the scope of protection within the context of industrial property and is even counted among the products that cannot be patented within the scope of Code No 6769. In Turkish Law, it is possible to say that software can only be protected within the context of copyright law if it carries the work criteria in Code No 5846. It is possible to register the related software by submitting it to the General Directorate of Copyrights. Patent protection within the scope of Code No 6769 provides great convenience and safe space to the right holder in this respect. The claims of the patents are recorded in the patent application in a clear and detailed manner before The Office, as will be discussed in more depth below. This ensures that the claims of the invention are copied and used by third parties, and the protection of right ownership is carried out faster and more securely.
Although the issue of protection of software within the context of patent law is controversial in the doctrine, as will be explained in detail below, it is regulated within the scope of Code No 6769 that software cannot benefit from patent protection because they are not inventive.
II. PATENTING SOFT WARE
There is no clear definition of the concept of invention in the legislation. However, in its simplest form, it can be defined as “the idea of a human being who solves a technical problem and has an innovative feature”. The basis of the patent, which is an industrial property product, is the invention. While the concept of patent refers to the industrial product, it also refers to the official document issued by The Office to the right owner of the invention4. While this concept was referred to as “invention certificate” during the Ottoman Empire, it was changed to the concept of “patent” with the post-republican regulations5.
Patent protection is provided by registration. A registered invention gives exclusive powers to its owner. Patentability criteria and exceptions are regulated in Article 82 of the Code No 6769. In the first paragraph of the article, the provision “Inventions in all fields of technology are granted a patent on the condition that they are new, contain an inventive step and be applicable to industry”. As it can be understood from this article, the following criteria must be found in order for a product/procedure to benefit from patent protection within the scope of the law.
- Innovation
- Including the invention step
- To be applicable to industry
The “innovation” criterion, which is one of the patentability criteria, refers to the fact that the invention is “not included in the known state of the technique”. Therefore, it refers to the fact that “it was put forward by written or oral promotion anywhere in the world before the application date, or it was not disclosed for use or in any other form”. In other words, the relevant patent application must be a different invention that was not developed for the same technique in the world before the application date.
The “inventive step”, which is counted among the patentability criteria, means that the invention was realized by an expert in the related technical field, as a result of an activity that cannot be clearly deduced from the known state of the art.
Finally, in order for an invention to be considered “applicable to industry”, it refers to the fact that that invention can be produced or applied in any branch of industry6. For an invention that contains features expressed in a general nature, a patent application can be filed by providing other form conditions stipulated in the Code No. 6769, and an invention can be patented within the framework of a legal procedure. It has also been stated by the German Federal Court that the most basic and distinctive feature for an invention to be patented is the technical element7.
In Code No 6769 Article 82; scientific theories, mathematical methods, computer programs, mental activities, etc. are regulated among those that cannot be patented because they are “doesn’t include technical character” / “non-technical” products. The text of the Code No 6769 is exactly as follows: “The following are not considered as inventions. If the patent application or the patent is related to the following subjects or activities, only these subjects or activities themselves are excluded from patentability.” In other words, “computer programs (as such)” cannot be patented.
Computer software does not have a clear definition in Code No 67698, but computer software is also referred to as computer-based inventions9. In the dictionary of the European Patent Office, “computer-based inventions”; it is defined as “inventions that work using a computer, computer network, or other programmable device. To be patentable they must have a technical character and solve a technical problem, be new and contain a creative technical contribution to prior art”. The importance and details of the issues in the definition will be explained in detail in the following parts of the study10.
For this reason, in the continuation of our study, the concepts of “computer program” and/ or “computer-based inventions/software” will be used in order to use the language of law. According to the regulation of Code No 6769, computer programs (as such) will not be able to benefit from patent protection. The articles of the Code No 6769 contain similar expressions as they are same with the European Patent Convention. There is no clarity on what is meant by the phrase “kendisi (as such)” in the Code No 6769 and the phrase “as such” in the European Patent Convention. In the justification of Code No 6769; it is stated that computer programs cannot benefit from protection, but if it is related to the work of an invention that will be entitled to patent protection, it can be protected within this invention11. According to the European Patent Convention, it is possible to patent “software by turning it into a computer-based invention”12.
Contrary to the European and Turkish practice; there is no provision in the United States13 and Japan patent law that computer programs or computer-compatible applications and inventions cannot be patented. For this reason, computer programs (software) can be patented in two countries. For the first time in the United States of America, a software was granted a patent registration certificate in 1968 and today the software is within the scope of patent protection. Again, there are no provisions prohibiting patent protection in the provisions of the World Trade-Related Intellectual Property Agreement (“TRIPS”)14. However, what is currently controversial is how software should be patented, rather than whether software can be patented.
According to Article 82 of the Code No 6769, if the patent application to be filed with The Office covers only the computer program/ software itself, it will not be considered an invention and, accordingly, it will not be patented15. “The computer program (as such)” cannot be patented due to the fact that computer programs do not contain individual technical characters. In other words, the acceptance of computer programs is that they do not offer a technical solution to a technical problem.
Whether the invention contains a technical character or not requires detailed examination. We would like to express that this review is an independent review of the invention from the elements of innovation, applicability to industry and the invention stage. Since it will not be possible to qualify as an invention, it will not be essential to analyze if a product or technique that lacks these three characteristics comprises technical elements. However, it is especially important from the point of view of computer programs, whether the mentioned conditions exist and whether a product that can be considered an invention has a technical element. The technical specification of each of the patent requests should be evaluated in terms of the technical element, and it should be determined whether there is an impact and contribution to the invention. If there are parts in the claims that do not meet the patentability criteria, these parts are requested to be changed and/or removed by notifying the patent applicant.
Since the relevant articles of the Code No 6769 are in parallel with the European Patent Convention, the decisions of the European Patent Office (“EPO”) have a great impact. This issue was put on the agenda by the EU Commission in 2002, and a study was carried out that paved the way for patenting. However, the study and the draft directive were rejected by the European Parliament16. Despite this, it is seen that computer programs have been patented by the EPO in recent years.
The principle of “whole content approach” was adopted by the EPO Appeals Board in the VICOM decision17. And if the computer program makes a “contribution to the state of the art”, it can be patented. “In the context of the principle of approach to the whole content, if the first technical effect of the invention is a normal effect, if it does not have a new and/or distinctive feature, it is ignored. For example, the electrical current generated by plugging a computer program into a computer is considered the first technical effect for a request to the computer program and is not considered. In such a case, if the invention can create a second technical effect, it will be patentable”18.
In addition, in the decision of the EPO Appeals Board “Computer Program Product”19, it was stated that computer programs cannot benefit from protection only because they are abstract products, because they lack technical character. In this decision, it was emphasized that the important criterion in the patentability of computer-based inventions is the “technical character”20. If it contains technical character, it can be interpreted that computer-based inventions/ computer programs can be patented. In the “Computer Program Product” decision of the EPO, computer programs alone do not carry a “technical” criterion, but the effect between the computer (hardware) and the program (software) has a technical character, “a technical problem with a technical and new tool from a technical point of view”. It is stated that it can be patented provided that it is dissolved.
According to the EPO decision, in order for the software to be technically acceptable, it must be computer-based/integrated with the computer, but this technical effect must be above the known. In other words, the software stored on any computer-readable device or the software as such can be protected by a patent if it has an advanced technical effect beyond the expected technical effect21. In summary; first of all, it will be examined whether the application is a valid subject for patent protection. After that, it will be determined whether this innovation satisfies the three requirements outlined in Article 82 of Code No. 6769 and whether it has a technological impact.
As in EPO, the prerequisite for an invention to be patentable in The Office is that the invention has a technical character. Providing this feature, or technical character, is possible by including the software in a technical element such as a computer, database, etc. Applications whose technical character consists only of performing non-technical operations of the common technical elements listed above; in EPO and The Office, they often easily provide the criterion of innovation. However, it has serious difficulties in meeting the invention step criterion22.
As a result, it is not possible for software, that is, “computer programs” (as such) in the words of the law, to be registered and receive patent protection within the framework of Turkish Law. Because, as explained above, it has been stated that it cannot be patented by the express provision of the law. However, it is accepted by EPO that the invention can be patented if it has a “technical” element, in other words, if it is a computer-based software. In a similar vein, it is obvious that The Office is looking into the technological component and that software proposals without technical components would be rejected. Because it is thought that inventions such as software are abstract and do not contain a feature that exceeds the known state of the art, and they are not different from a mathematical formula. This creates an obstacle to software in terms of patent protection. In the context of Turkish Law, if the software meets the conditions in Code No 5846, it can be said that it has the quality of “work” and therefore it will be protected within the framework of the rights arising from the work.
III. CONCLUSION
Intellectual property rights are a controversial area with almost every development in this field due to developments related to technology. New age products such as software, computer programs and databases constitute one of the critical points of this discussion. It is essentially clear how the products in question will be protected according to the regulations in Turkish Law. However, it is debatable whether this protection is sufficient and whether it fully meets the rights/ demands of the idea/ product owners.
We may state that every component of the software is protected since it complies with Code No. 5846 in terms of its source codes, themselves, interfaces, etc. However, within the scope of the Code No 6769, software/ computer programs (as such) are considered among the products that cannot be patented on the grounds that they are not an invention. Applications submitted through the EPO are significant in terms of applications submitted through The Office since the relevant clause of the European Patent Convention and Code No. 6769 are comparable. It is also seen in the various decisions of the EPO on this matter that computer programs are considered patentable provided that they contain a technical element and are integrated with a computer. More specifically, “computer-based inventions” can be patented if they have a technical element. However, there is no concrete definition for this term, and the evaluation criteria are not explained in a concrete way.
BIBLIOGRAPHY
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BAYRAM DAŞBAŞI, Bilgisayar Tabanlı Buluşların ve İş Metotlarının Patentlenebilirliği: Dünyadaki Uygulamalar ve Ülkemizdeki Durum, Uzmanlık Tezi, Ankara 2013.
FATMA SÜMEYRA DOĞAN, The Patentability of Computer Implemented Inventions Under European Union Law, İstanbul Medeniyet University Institute Of Graduate Studies Department of Private Law, Master of Law Thesis, May 2021.
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MUSTAFA GÜNEY ÇALIŞKAN, TÜRKPATENT’te Bilgisayar Tabanlı Buluşların Değerlendirilme Kriterleri I, II, III (Date of Access: 17.05.2023 https://iprgezgini.org/2021/02/08/turkpatentte-bilgisayar-tabanli-buluslarin-degerlendirilme-kriterleri-bolum-i/#_edn3).
UĞUR ÇOLAK, Patent Hukuku, Adalet Yayınevi, Ankara 2022.
FOOTNOTE
1 Dated 13.12.1951, Official Gazette No: 5846 (OG).
2 Dated 22.12.2026, OG No: 6769.
3 Mustafa Güney Çalışkan, TÜRKPATENT’te Bilgisayar Tabanlı Buluşların Değerlendirilme Kriterleri I, https://iprgezgini.org/2021/02/08/turkpatentte-bilgisayar-tabanli-buluslarin-degerlendirilme-kriterleri-bolum-i/#_edn3 (Access Date: 17.05.2023).
4 Cahit Suluk, Tescilsiz Fikri Ürünlerin Haksız Rekabet Hükümleri ile Korunması, https://fikrimulkiyet.com/tescilsiz-fikri-urunlerin-haksiz-rekabet-hukumleri-ile-korunmasi/ (Access Date: 17.05.2023).
5 Sıla Şahin, Osmanlı Devleti’nde Patent Uygulaması: İhtira Beratı Kanunu, Sakarya Üniversitesi Sosyal Bilimler Enstitüsü, 2019, p. 1.
6 Fülürya Yusufoğlu, Patent Verilebilirlik Şartları, Galatasaray Üniversitesi Sosyal Bilimler Enstitüsü, Doktora Tezi, 2008, p. 245.
7 Uğur Çolak, Patent Hukuku, Adalet Yayınevi, Ankara, 2022, p. 156.
8 In the definition made by the World Intellectual Property Organization, computer programs are expressed as “a set of instructions that, when in a machine-readable environment, enables a machine capable of information processing to achieve, perform or display a particular function, task or result”. In American Law, a computer program is defined as “a sequence of commands given to a computer to produce a particular result”. (Andrés Guadamuz González, Software Patent Debate https://era.ed.ac.uk/bitstream/handle/1842/2264/softwarepatentdebate.pdf?sequence=1&isAllowed=y (Access Date: 17.05.2023).
9 In terms of Patent Law, the terms “computer programs” and “computer software” can be used synonymously and interchangeably. EPO, EBoA 12 Mayıs 2010 ve G 0003/ 08 sayılı Karar, paragraf 9.1., WIPO Telif Hakları Sözleşmesi, m. 4.
10 Avrupa Patent Ofisi, Sözlük https://www.epo.org/service-support/glossary.html (Access Date: 30.05.2023).
11 Çolak, p. 152.
12 Çolak, p. 152.
13 Patent protection was provided by the United States Patent and Trademark Office in 2011 for the system that enables the unlocking of keys for I-phone phones developed in the United States of America.
14 Çolak, p. 155.
15 Berber, p. 219.
16 Çolak, p. 160.
17 EPO Temyiz Kurulu, !5 Temmuz 1996 tarih 0208/84/97 sayılı “Computer – related invention” kararı. https://www.epo.org/law-practice/case-lawappeals/recent/t840208ep1.html (Access Date: 17.05.2023).
18 Çalışkan, https://iprgezgini.org/2021/02/08/turkpatentte-bilgisayar-tabanli-buluslarin-degerlendirilme-kriterleri-bolum-i/#_edn3 (Access Date: 17.05.2023).
19 EPO Temyiz Kurulu, 1 Temmuz 1998 tarih 1173/97 sayılı “Computer Program Product/IBM” kararı. https://www.epo.org/law-practice/case-lawappeals/recent/t971173ex1.html (Access Date: 17.05.2023).
20 Çolak, p. 228.
21 Çolak, p. 157.
22 Çalışkan, https://iprgezgini.org/2021/02/08/turkpatentte-bilgisayar-tabanli-buluslarin-degerlendirilme-kriterleri-bolum-i/#_edn3 (Access date: 17.05.2023).
