On the Ukrainian Patent Office's Position on Patentability of Computer Programs

by Artem Taranowski

Nobody denies the importance of IT industry for Ukraine’s economy. There are no doubts that strengthening IP protection would accelerate the industry and Ukrainian economic growth. But when it comes to patent protection for computer programs being such a measure, the stakeholders are at variance on this point.

IT industry players are eager to have patent protection for software at their disposal, just as their rivals in key jurisdictions do. While the Ukrainian Patent Office does not regard software-related creations as inventions and is of the strong opinion that ones do not qualify for patent protection.

Though the Ukrainian Patent Office did implement the opinion in its internal procedures, it still remains inactive toward voicing and defending such an approach publicly, and its arguments seem to be unpersuasive and outdated.

During one of their rare public appearances last summer, the Ukrainian Patent Office’s officials stressed that computer programs have no patent protection in Ukraine, patents on computer programs are not allowed, it is impossible to protect computers programs through patents, and that computer programs are not considered inventions.

It is therefore clear that the Ukrainian Patent Office regard computer programs as being non-statutory subject matter.

However, the Ukrainian Patent Office’s position is not novel. It was exactly the same situation in the United States, albeit in the mid-sixties of the last century.

The United States Patent Office’s Guidelines for Examination of Programs of 6 July 1966 proposed for adoption has proclaimed that a process carried out by a programmed apparatus is non-statutory where the process as claimed merely states the algorithm [1].

The President’s Commission on the Patent System then reiterated the position in its report recommending that a series of instructions which control or condition the operation of data processing machine, generally referred to as a ‘program’ shall not be considered patentable subject matter [2].

The belief then was expressed that programs can not readily be examined for adherence to novelty, utility and nonobviousness criteria; it was also directly stated that the Patent Office can not examine applications for programs because of the lack of a classification technique and the requisite search files, and even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated [3].

Though not clearly voiced, the Ukrainian Patent Office may well bear the same excuses in mind.

It is generally known that the guidelines proposed by the United States Patent Office were not approved during the public hearing on the matter held later that year.

Two years later the guidelines have nevertheless been adopted as amended upon consideration of the statements made at the hearing, as well as written comments filed in response thereto; the amended guidelines appeared to be much shorter and not that straightforward [4].

Interestingly, the opponents not just criticised the United States Patent Office’s position but acknowledged its enormous amount of competence in the area, the difficulties it faced and made propositions with regard to finding out a solution. Among others, it was recommended to establish a search committee to devise a search system for programs consisting of representatives of software houses, hardware manufacturers, and the government. It was intended that the committee be success-oriented and that its philosophy be to find a method, rather than to learn if such a method can be found. And it was stressed that an effort should be made to overcome the obstacles instead of simply using them as excuses that computer programs can not be patentable. [5]

But how the situation in the United States in the mid-sixties of the last century compares to the situation in Ukraine nowadays?

The United States Patent Office based its position not just on statutory provisions but also on courts’ decisions applying the law. Technology back then was poor and expensive even in the United States. The development of the situation has nevertheless not stopped but started then and there — it has become not the final destination but the starting point.

There are no court decisions in Ukraine covering patent protection for computer programs. And it is difficult to enrich the practice of applying the law in this sphere because nobody wants to take risk of flushing his or her creation down the toilet. So, Ukrainian courts’ position is neither an obstacle nor an advantage here.

But technology is now much, much stronger and cheaper even in Ukraine.

It is therefore still possible to make the situation the turning point here in Ukraine and make the Ukrainian Patent Office take measures in order to find out a solution.

[1] 829 Official Gazette of the United States Patent Office 2 (2 August 1966)

[2] The Report of the President’s Commission on the Patent System, To Promote the Progress of ... Useful Arts in an Age of Exploding Technology 12 (1966)

[3] The Report of the President’s Commission on the Patent System, To Promote the Progress of ... Useful Arts in an Age of Exploding Technology 12, 13 (1966)

[4] 855 Official Gazette of the United States Patent Office 829, 830 (22 October 1968)

[5] Bender, David. Computer programs: shall they be patentable? Columbia Law Review 68, no. 2, 258 (February 1968)