Patent protection for computer software is notoriously difficult to obtain but not impossible.
Debate has been raging for years as to the eligibility of software patents following the landmark Alice Corp. vs CLS Bank case in 2014 and even further back the Bilski v. Kappos case. Now, with Covid accelerating the growth rate of software patents, it feels like the right time for Aalbun to offer three points to consider before any software company considers filing a patent.
Seven years after the Alice case, the news that 63% of the patents issued in the U.S. in 2020 were software-related patents (a 23% increase when compared to 2019), means companies who in the past have not patented software should be jumping on the software patent bandwagon before it’s too late.
But we would urge caution.
The software patent market moves fast and the patenting process can be laborious and slow. Plus, there may be other more appropriate routes to protecting your ideas. Here are three points to consider before diving head-first into the patent market.
The first and most important step to consider before starting the patent process is to ask: is my software eligible for patenting?
This means being honest and asking a simple question of your software: does it solve a technical problem?
Software operates in a “grey area” of intellectual property, which means many inventions will not even qualify for eligibility or will have a limited scope for protection. The term ‘software patent’ is not even legally defined by the European Patent Office (EPO), instead, patents are granted under the term ‘computer-implemented inventions’ (CIIs).
A software invention can avoid exclusion from patentability by assuming the status of a CII because it is implicitly assumed that the CII will clear the hurdle of technical character due to the fact “any computer program basically amounts to a method that is to be implemented by a computer.”
Essentially, the EPO is looking at the novelty of the invention and the inventive step, as it does with non-software inventions. Any non-technical features or claims will be ignored in the assessment. Proving the aforementioned two steps is, of course, easier said than done.
If you do decide to go down this route, make sure you have properly considered whether this approach adds value to your business and fits into your wider IP strategy and overall business strategy.
If you’re unsure, see the graphic below and follow the steps to discover whether your idea meets the criteria for patentability (European Patent Office only).
The terms outlined above are only applicable to the EPO which leads to the next consideration for any potential software patent – know your patent office.
There are a variety of approaches to determining software patentability depending on the patent office you are working with. We have already touched upon the EPO guidance, so let’s explore some of the other offices.
In the U.S., any software invention must be more than an “abstract idea” or it must “transform” the abstract idea into a useful technical solution. If this feels vague or unhelpful, then that is just the nature of software patenting.
But there are a couple of general rules to consider that may provide clarity:
If you can answer yes to both these questions, then patentability is potentially achievable.
Where the UK Intellectual Property Office (UKIPO) differs is that they assess if the “claimed subject matter determines whether these novel features entirely fall within excluded subject matter and establish a technical contribution to the art (this is sometimes referred to as the 'contribution approach').”
As a result, patent software grants are typically harder to obtain in the UK, but again, not impossible. In fact, in recent months we have seen the UKIPO searching and examining software inventions, which they did not do a few years ago, and also granting more software-based patents.
The truth is that software patenting is a minefield of conflicting guidance and the key here is the framing of the patent and focusing on demonstrating the technical solution your software provides. Having a patent drafter with global knowledge of the differing approaches is a must.
If the directions above have left you confused or uncertain about the patentability of your software, then fear not.
There are other ways to protect your ideas that circumvent the need to obtain patent protection.
One way would be copyright which is a cheaper alternative to patenting and serves the function of stopping your opponents from copying the expression of your work, i.e. the programming of the code. This means the code is protected even if only a portion of the code is used by a competitor, even if the recent decision from Google vs Oracle shows how difficult it is to win in court using copyright alone.
While it is true that copyright protection is not as strong as patent protection, the potential downside of having to disclose your invention to your competitors in a fast-moving market like software makes copyright a more attractive prospect.
This is before you even consider whether it is worth you entering the patent market, which has become a defensive game that favours incumbents who can take out broad patents at great expense. Then there are of course ‘patent trolls’ or NPEs (Non-Practicing Entities), who in a similar vein, can threaten to sue a business for patent infringement, despite not even being in the same market or making a similar product or service.
The choice between whether to patent or copyright your software will ultimately boil down to the chances of success and the costs involved with each method. Our view is that making the patenting process more affordable will signal a shift, led by SMEs and multinationals, towards more accessible software patents.
Patenting software is not easy but that should not deter you from trying if you believe your idea is worth protecting.
The number of software patents being granted alone should be enough encouragement for you to explore the potential at the very least.
As well as the above guidance, it helps to have an IP firm behind you with global expertise to negotiate the different patent office rules and a faster delivery time to help you stay one step ahead of the competition in the fastest-moving of industries.
Aalbun is the first digital IP Platform as a Service (PaaS) with top IP experts, including patent attorneys who specialise in software, who are waiting to help protect your ideas. You can easily order, track and manage your software IP through our secure digital platform.
To discuss if your software is patent-eligible or fits into your business's wider intellectual property strategy, or to explore the potential of copyright protection, click here to schedule a meeting with our team of IP specialists.