Patenting Software

Modern society relies heavily on computer technology.  Without software, a computer cannot operate.  Software and hardware work in tandem in today’s information society.  So it is no wonder that intellectual property protection of software is crucial not only for the software industry, but for other businesses as well.

The intellectual property protection of computer software has been highly debated at the national and international level.  For example, in the European Union (EU), a draft Directive on the Patentability of Computer-implemented Inventions has been discussed in order to harmonize the interpretation of the national patentability requirements for computer software-related inventions, including the business methods carried out via the computer.  These discussions show divergent views among stakeholders in Europe.  Furthermore, the Internet raises complex issues regarding the enforcement of patents, as patent protection is provided on a country-by-country basis, and the patent law of each country only takes effect within its own borders.

This article does not attempt to clarify all the questions and uncertainties surrounding software patents but rather provide five tips or suggestions which should be kept in mind when considering patent protection of software-related inventions.

TIP 1: Do you really need a patent for your software-related invention? Think twice before preparing a patent application.

In many countries, computer programs, whether in source or object code, are protected under copyright. The major advantage of copyright protection lies in its simplicity.  Copyright protection does not depend on any formalities such as registration or the deposit of copies in the 151 countries party to the Berne Convention for the Protection of Literary and Artistic Works.  This means that international copyright protection is automatic - it begins as soon as a work is created.  Also, a copyright owner enjoys a relatively long period of protection, which lasts, in general, for the life of the author plus 50 or, in certain countries, 70 years after the author’s death.

In contrast, a patent must be applied for, in principle, in each country in which you seek patent protection.  In order to enjoy patent protection, an application for a patent shall comply with both formal and substantive requirements, and a patented invention shall be disclosed to the public. These requirements can be legally and technically complex, and their compliance often requires a legal expert’s assistance.  Compared with copyright protection, the term of protection is much shorter, namely, in general, 20 years from the filing date of the application.

Then why do many people seek to patent their software-related inventions?  The answers is manifold.  But one of the strongest reasons is that copyright protection extends only to expressions, and not to ideas, procedures, methods of operation or mathematical concepts as such.  Although copyright protects the “literal expression” of computer programs, it does not protect the “ideas” underlying the computer program, which often have considerable commercial value.

However, due to the complex requirements for the grant of patents, the costs for obtaining and enforcing a patent may be costly.  Unless you have important financial resources, it may be worth considering whether patenting your software-related innovation is the best way to protect your product.  The possibility and feasibility of using other types of intellectual property, such as trademarks, industrial designs and trade secret protection, may also be considered.

TIP 2: What do you wish to protect from your competitors? Identify the core part of your innovation.

Software may be incorporated in a computer or an apparatus, such as a household appliance or a car.  But often, such software is created, reproduced and distributed on media (such as diskettes, CD-ROMs or an online network) which are separate from the hardware.  Software may provide technical functions, such as controlling a machine or regulating the room temperature. It may be used to monitor communication network systems or provide interfaces between a computer and a human being.  Or, it may be used to process scientific, financial, economic or social data in order to, for example, explore a new scientific theory or seek the highest possible return on an investment.

Depending on how the software is used together with the hardware, what you wish to protect from your competitor may differ.  The core part of your software-related innovation may lie in an apparatus, a system, an algorithm, a method, a network, the processing of data or the software itself.  Such considerations may help you assess the possibilities to obtain a patent for your innovation as described in TIP 3 below.

TIP 3: Is your innovation patentable? Not all types of software-related innovation can enjoy patent protection.

To be eligible for patent protection, an invention must meet several criteria. Among those, five are most significant in determining patentability: (i) the invention must consist of patentable subject matter; (ii) the invention must be capable of industrial application (or, in certain countries, be useful); (iii) it must be new (novel); (iv) it must involve an inventive step (be non-obvious); and (v) the disclosure of the invention in the patent application must meet certain formal and substantive standards.  Since patent law is applicable to inventions in any field of technology without discrimination, to be patentable, software-related inventions and business method-related inventions must also comply with those requirements.

In connection with software-related innovation, particular attention should be paid to the requirements concerning patentable subject matter and inventive step (non-obviousness). Firstly, a patent is granted for an “invention”, which may be described, in general, as a solution to a technical problem.  So far, there is no international definition of “invention”, and indeed, each national law would give you a different answer to the question as to which subject matter falls under the term patentable “invention”. In many countries, “inventions” are required to have a technical character, or to provide a solution using laws of nature.  Thus, mere economic theories, methods of doing business, mathematical methods or computer programs as such are not patentable “inventions”.  Since this requirement varies from one country to another, as explained further in TIP 4, you should pay special attention as to whether your software-related innovation is covered by patentable subject matter under the relevant patent law.

Secondly, in order to obtain a patent, an invention must not be obvious to a person skilled in the art having regard to the prior art.  It is not enough that the claimed invention is new, i. e., that it is different from what exists in the state of the art.  But the difference between the claimed invention and the existing state of the art should be significant and essential to the invention. Therefore, it is most likely that it will not be possible to obtain a patent for a software-related innovation that simply replaces existing technical and physical solutions with the same solutions using software and a computer, insofar as such a replacement would be obvious to an average engineer in the relevant technical field.

Do these explanations sound complex?  Indeed, it is legally and technically complicated to meet all the necessary requirements to obtain a patent.  That is why it is recommended that you contact an intellectual property specialist who is familiar with both technical and legal matters, as further described in TIP 5.

TIP 4: Do you need to protect your innovation abroad? Patentability requirements are not always the same in each country.

If you wish to protect your innovation abroad, in principle, you need to obtain a patent in each country in which you are interested in accordance with the law of that country.  A patent that is granted in country X, can be enforced only in country X, and it is not possible to stop your competitors using your invention in other countries.  In some regions, a regional patent office, for example, the European Patent Office, accepts regional patent applications, or grants patents, which have the same effect as applications filed, or patents granted, in the member states of that region.  The major difficulty that you may encounter when seeking a patent abroad is that national/regional laws and practices differ from one country/region to another.

One example is the requirement concerning patentable subject matter.  In Europe, the European Patent Convention (EPC) expressly excludes “computer program per se” and “methods of doing business per se” from the patentable subject matter. Although there is no definition of the term “invention” in the EPC, it is generally understood that inventions under the patent law should have a technical character.  For example, methods for controlling an industrial process, processing of data representing physical entities (temperature, size, shape etc.) and the internal functions of the computer itself are considered to have a technical character. A computer system used in the field of finance may have a technical character if the process is based on technical considerations relating to how a computer works (for example, improvement of security), rather than just on the consideration as to how the financial system works.

On the other hand, in the United States of America (USA), there is no specific exclusion of software or business methods from patentable subject matter.  The law states that the subject matter, to be patentable, must be a useful process, machine, manufacture or composition of matter. According to the US Supreme Court , the Congress intended the statutory patentable subject matter to include “anything under the sun made by man,” but the laws of nature, natural phenomena and abstract ideas are three specific areas which are not patentable. For example, the Court of Appeals for the Federal Circuit (CAFC) found that a software invention (mathematical algorithm) to create a smooth display of numeric data on an oscilloscope was patentable subject matter , because the claimed invention as a whole was a practical application of an abstract idea providing a “useful, concrete and tangible result.” Therefore, it may be that certain software-related innovations are considered as patentable subject matter in the USA, while the same innovations might fall outside of the scope of patentable subject matter in Europe or Japan.

In order to facilitate the filing of patent applications internationally, the Patent Cooperation Treaty (PCT) provides an international filing system, under which an applicant may file a single international patent application having the same effect as national applications filed in each Contracting State of the PCT.  However, under the PCT system, while the filing procedure is a common one, it is still each single State that grants a patent for its territory in respect of the claimed invention contained in the international application.  Nevertheless, the PCT system simplifies the procedure and cuts down the costs of obtaining patents abroad. Further information concerning the PCT, including fees, can be found on the WIPO web site: http://www.wipo.int/pct/en/index.html.

TIP 5: Consult an intellectual property expert who is familiar with the relevant national law and practice.

To come up with a good invention is one thing, to draft a good patent application is another.  It is very important to draft a good patent application from the start, because once it is filed, the possibilities of amending it are rather limited.  In particular, drafting “claims” in the application is crucial, as the claims define the subject matter for which the applicant seeks patent protection.  Once patented, the exclusive rights conferred by a patent can be enforced to the extent the invention is defined in the claims. This is why, unless you are familiar with both technology and intellectual property law, it is advisable to consult an intellectual property expert to draft a patent application that meets the requirements under the patent law of the country concerned.

In particular, with respect to software-related innovation, appropriately drafted claims may avoid the refusal of the patent application.  For example, in some countries, claims defining a computer program itself or a computer program embodied on a machine-readable medium (such as diskettes or CD-ROMs) are accepted.  This is due to the fact that software products are often marketed in the form of computer readable media or directly over the Internet, separately from the computer hardware.  In order to prevent the unauthorized commercialization of such software products, certain countries allow to claim the software itself or a machine-readable medium storing the software that performs the claimed functions. In other countries, however, such claims are not accepted.  It is in those countries that the claims need to be drafted carefully, e.g. in the form of an apparatus, a process or a system that encompasses the functional ideas behind the software, but that still covers the essential part of the invention.

In addition to the drafting of a patent application, there are a number of formal and substantive requirements that are better dealt with by intellectual property specialists.  Although a specialist obviously has his price, the benefits you get through professional help in seeking patent protection might be well worth it.  Indeed, a simple mistake may, in certain cases, lead to the irreversible loss of the right to obtain a patent, and consequently, put your competitors in a position to free-ride on your invention.

Further Links and Readings

http://www.wipo.int/news/en/links/index.htm
This page provides directories of national/regional intellectual property offices and website addresses of those Offices.

http://ecommerce.wipo.int/survey/index.html
"Intellectual Property on the Internet: A Survey of Issues" (WIPO)

http://www.uspto.gov/web/menu/pbmethod/
"Business Method Patents" (United States Patents and Trademarks Office)

http://www.jpo.go.jp/quick_e/index_tokkyo.htm
"Policies concerning business method patents" (Japan Patent Office)

http://www.epo.org/law-practice/legal-texts/html/caselaw/2016/e/index.htm
"Case Law of the Boards of Appeal of the European Patent Office" (European Patent Office)

http://ec.europa.eu/internal_market/indprop/comp/index_en.htm
Information concerning draft EU Directive on the Patentability of Computer-implemented Inventions (European Commission)

http://cordis.europa.eu/pub/innovation-smes/docs/brochure_ipr_software_protection_en.pdf
"Your Software and How to Protect it"

Daniel J. M. Attridge, "Challenging Claims! Patenting Computer programs in Europe and the USA", Intellectual Property Quarterly, No. 1 [2001], pages 22 to 35

Daehwan Koo, "Patent and Copyright protection of Computer Programs", Intellectual Property Quarterly, No. 2 [2002], pages 188 to 211

Please send your comments, suggestions or any other feedback concerning this article to:  tomoko.miyamoto@wipo.int.