It is a common myth that software inventions are not patentable in the UK and Europe, but this simply isn’t true. It is true to say that computer software per se is not patentable in the UK and Europe (and many other countries around the world). BUT that does not mean that computer-implemented inventions can’t be protected by a patent: it often just takes a little more thought and effort to get it right. So, if being able to prevent others from developing their own software that does the same thing as yours would benefit your business, then it is worth reading on as I try to explain: how and when can you patent software inventions?
The law
In general, for a ‘normal’ invention to be patentable, it must be novel (i.e. have one novel technical feature compared what is already known) and involve a so-called “inventive step”. This inventive step can usually be found in some non-obvious improvement or technical advance or advantage. For software inventions, there is a third hurdle to overcome, in that the ‘technical advance or advantage’ can’t fall in a category of ‘excluded inventions’. These excluded inventions include things like methods of performing mental acts, methods of playing a game or doing business, methods of (medical) diagnosis, methods of displaying information, and mathematical methods (there are a few others, but these are usually the most relevant here).
The European Patent Office provides detailed guidance about what that means in real terms: https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_3_5_3.htm. However, this text is quite wordy, so when I talk to clients about this, I try and break it down a little bit more. What it’s basically saying is that your software can provide an improvement in these excluded categories (indeed, the improvement may be its principal USP), but we can’t use that improvement alone to provide an inventive step. Instead, we have to find some technical advance beyond that.
What, Why?
As a simple example, let’s consider that you have developed a new accounting software package. It is safe to assume that you think it is better than the currently-available solutions (otherwise, presumably, you wouldn’t have done it). On its own, though, that often isn’t enough to make it patentable because accounting is a method of doing business and/or a method of performing a mental act and, as such falls in the excluded categories.
So we have to look deeper, and think about WHY it is better, WHAT it’s got that others don’t, and HOW this is achieved.
Why is it better? What feature (or features) provide the improvement(s)? If it’s easier to use, for example, why is it easier to use? If it’s more secure, why? If it helps businesses to better plan ahead, what feature(s) provide that improvement.
Then, we need to think about how that improvement has been achieved, and what we’re really looking for here are the technical problems encountered when trying to effect some improvement, and the technical solutions developed to overcome those problems.
How?
Then, we need to think about how that improvement has been achieved, and what we’re really looking for here are the technical problems encountered when trying to effect some improvement, and the technical solutions developed to overcome those problems.
Going back to our simple example, let’s say your new accounting software helps businesses to better plan ahead because you have come up with a quicker/more accurate way of forecasting using the company’s day-today finance data stored within, and/or pulled into, software package. The algorithm(s) used to effect the forecasting function are not patentable in themselves (because they are ‘mathematical methods’), BUT the way the data is handled, transformed, mapped and extrapolated as part of a forecasting routine may, if it is, in some way, novel, provide a technical focus for a patent application, especially if that routine or process can be done more quickly with smaller data than a conventional solution could.
As another example, your accounting software may provide a real-time link to a user’s bank account (s). There are potentially plenty of technical problems associated with facilitating that function. For example, you may devise a new interface that can effect a secure enough link to allow for a live data feed, or you may encrypt or compress the data going back and forth between the bank and the user’s software in such a way that a real time link can actually be facilitated. All of these technical challenges and solutions could, potentially, provide the basis for patent protection.
Is it worth it?
A patent wouldn’t stop a third party from trying to provide a software package boasting the same improvements, but with a patent, you could stop them from solving the same technical problems in the same way. And, often, that amounts to the same thing but, even if not, it will certainly slow them down while they try and work around your patent.
Ultimately, the ways in which novel software innovation could, potentially, be patented are far too numerous to mention. But the moral of the story is: if you have developed (or are developing) a new software-based invention, and it would benefit your business to be able to prevent a third party from doing the same thing, don’t dismiss the possibility of securing patent protection for one or more of the key elements of the software until you have discussed it with a patent attorney.
Need Help?
If you have any questions about this, or any other IP matter, please book a free initial consultation by visiting our website at https://strachanip.co.uk/contact/, or by emailing vicki.strachan@strachanip.co.uk or calling +44 (0) 1981 551185
Note: the above information is provided for guidance only. The guidance given is based on entirely hypothetical examples, and it is not to be considered, in any way, legal advice. The legal and practical information offered in this blog is based on UK and European patent laws, and the statutes and precedents in force in other territories vary.
