We are often asked about patent protection for software products. “Software patents” can be more difficult and expensive to obtain than patents for other types of invention, and indeed are often not obtainable at all.
It is important not to fall into the trap of spending thousands of pounds on an application which really has no chance of success, but equally patent protection should not be dismissed out-of-hand just because software is involved.
Novelty and inventive step
Before we dive in to software-specific issues, it is worth stating the basic criteria for patentability in all technical areas. To be granted a patent an invention must be novel and must involve an “inventive step.” An invention involves an inventive step if it would not be obvious to the person skilled in the art. You can read more on novelty and inventive step on our patentability page.
What is the law on software patents?
UK and European law specifies that the following things are not inventions:
- a discovery, scientific theory or mathematical method… as such;
- a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever… as such;
- a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer… as such;
- the presentation of information… as such.
For software-related inventions, the excluded category of “a program for a computer” is obviously key. However, “a method for doing business”, and a “mathematical method” are often also relevant.
The qualification “as such” has been emphasised for a reason – the law only excludes inventions which are wholly within excluded categories. There are therefore plenty of inventions which include software for which valid patents have been obtained.
The law has been interpreted by the UK Courts and the European Patent Office in different ways. In the UK, the accepted test is that the actual contribution to the art which is made by the invention is assessed. If that contribution falls wholly within an excluded category, then a patent cannot be granted.
At the European Patent Office, the Examiner will assess whether or not the claim contains any “technical” features. The scope of technical features is extremely wide, and includes more or less any piece of hardware, however trivial or commonplace. The initial patentability bar is therefore rarely difficult to overcome at the EPO: a claim to a computer program might not be acceptable, but the computer program stored on a computer-readable medium (e.g. a disc) contains a technical feature and will therefore pass muster.
That doesn’t mean though that it is easy to obtain a software patent at the EPO. It is all very well for a claim to meet the requirement of “technical character”, but a patent cannot be granted unless the claim also involves an “inventive step”. The EPO have developed a process for assessing the inventive step of software-related applications, and this is the larger hurdle to overcome.
How is inventive step assessed for software?
At the European Patent Office, the Examiner will first divide out any “non-technical” features from the claim. The non-technical features are often really “business aims” – the sort of functional advantages which are advertised to end users. The Examiner takes the list of non-technical features and uses it to derive a “requirements specification”. The question in relation to those features is then “would a skilled person (i.e. a competent but unimaginative programmer) be able to use his common general knowledge to meet the requirements specification?” If the answer is yes, then the claimed invention does not involve an inventive step.
In the UK, assessment of inventive step follows the same approach as for non-software inventions. The Examiner looks at the differences between the claimed invention and the prior art, and asks whether it would be obvious for the skilled person to arrive at the invention using only his common general knowledge.
Does the UK and European approach amount to the same thing?
This one is controversial. According to the European Boards of Appeal, the UK approach is “irreconcilable” with the European Patent Convention. There are differences between the UK and the EPO, and also between other EPC member states. Indeed, it might be said that the European Patent Convention would never have been agreed between thirty-eight countries if they all thought that it meant the same thing.
That said, it is hard to find concrete examples of claims which are certainly valid under the EPO approach but not under the UK system, or vice-versa. Ultimately, it is academic whether a patent is invalid because it claims excluded subject matter or because it lacks inventive step – it is invalid all the same.
In practical terms, the statistics seem to point to a greater readiness on the part of the EPO to grant software-related applications – but it is difficult to make a completely reliable comparison. Statistically, both offices refuse large numbers of applications at first instance, and both offices seem to grant more applications the further up the appeal tree you go. The lesson here is that, whether you choose the UK or the European route, you might be in for a fight.
So is my invention patentable then?
What does all this talk of “technical features” and “actual contribution to the art” actually boil down to? Patentability of software is not a simple question, but here are some indicators you can use to determine whether or not you might have a case.
Identifying the “business needs” or the requirements specification might be a familiar exercise. Indeed, you may already have a requirements specification for your product. Take that specification and try to imaging that you are a “skilled person”. The skilled person is a highly competent and experienced programmer, and has access to a wide library of reference material. However, the skilled person can only do obvious things – he is unimaginative and lacking in any kind of inspiration – he is not an inventor.
Ask yourself: “would the skilled person be able to take the requirements specification and make my product?” If so, there is probably no invention here.
The hypothetical “skilled persons” of patent law are rare in real life, so here is a more down-to-earth alternative:
“Would a technical person (as opposed to a business person) think that there was a clever technical invention in the program?”
If so, then perhaps you have the makings of a successful patent application. If the business people are jumping up and down with excitement about the new product, but the developers who made it don’t understand what all the fuss is about, then probably it’s not patentable material.
What are my other options?
Whether or not you apply for a patent, and whether or not you get one, you should be aware of other Intellectual Property rights which may apply.
Copyright
Copyright subsists in the actual source code and object code in a computer program. This protects against copying of your program. However, copyright does not protect against copying the features to make a new program which does the same job.
Registered designs
Registered designs are occasionally useful, if you have a particularly distinctive screen displays or layout. Registered designs can also protect graphical symbols and can be a useful layer of protection on top of copyright in that respect.
Trade marks
A Registered Trade Mark protects the name(s), logo(s), or other marks which you use to identify the product as originating from you. A Registered Trade Mark can be used to prevent competitors from using the same name, or names which are confusingly similar.