You can’t patent software… or can you?


By Sam Cleary, a European Patent Attorney
January 2019





Sam Cleary is a European Patent Attorney at Dehns – a top-tier firm of Patent and Trademark Attorneys with offices both in the UK and Germany.  Sam advises clients regarding their intellectual property, and specialises in electronics, telecommunications, and software-based inventions.


Can you patent software?


When speaking to those in industry, there is an oft-held misconception that software cannot be patented.  While there is an element of truth in this, the situation is, in practice, more complex than is widely understood.

By way of historical background, the reason for software or computer programs being ‘excluded’ from patent protection is that the computer program itself, i.e. the source code – both pre- and post-compilation, is already covered by copyright protection.  This is certainly true: original source code invokes copyright protection automatically upon its creation, much as copyright arises from an original artistic or literary work.  In the UK, copyright lasts for 70 years after the death of the author.  Why then would one seek patent protection which, by comparison, lasts for ‘only’ 20 years from when the application is submitted?

A compelling reason is that copyright only protects against direct copying of the source code, rather than protecting the underlying function of the source code itself.  In other words, a competitor could independently write their own software from scratch that performs in the same way as yours, without infringing your copyright.  Having patent protection, however, provides a mechanism to stop that competitor, even if they have never seen your software before, because a patent affords you a monopoly right.  Moreover, because the patent protects the technical function of the software rather than simply the code in which that function is expressed, the protection afforded by a patent is typically far broader in nature than that associated with copyright.

Patents are available for any new idea, in a technical field, that is deemed “inventive”, or not obvious, over related earlier ideas.

In many jurisdictions, including the UK and Europe, computer programs as such are excluded from patentability.  However, much weight is applied to this “as such” caveat and the exclusion is generally applied narrowly.

The European Patent Office (EPO) – which, for those wondering about Brexit implications, is wholly separate from the European Union – applies a test which asks the question of whether the computer program claimed has ‘technical character’, i.e. whether it produces a ‘technical effect’.  A classic example of this is a computer program that operates an anti-lock braking system in a car – the computer program clearly has an effect on the outside world.  However, computer programs that affect the functionality of the computer itself may also be deemed to provide a technical effect, for example firmware that provides memory handling functions or that regulates the temperature of a processor.  The UK Intellectual Property Office (UKIPO) applies a similar, albeit not identical, test to the EPO. 

Historically, the US was particularly friendly toward computer-implemented inventions.  Famously, Amazon were able to secure patent protection (now partly revoked) for their ‘1-Click’ shopping feature.  In recent years, however, the pendulum has swung the other way.  The US Patent & Trademark Office (USPTO) has, in the last few years, been applying a far harsher standard, in many cases stricter than the criteria applied by the UK and European patent offices.  Recent guidance from the USPTO effective from January 2019 indicates a drive toward a softer approach, potentially in-line with practice in Europe.

Generally, it is certainly possible to patent software-based inventions, providing that the software is not simply a software-based implementation of a non-technical idea.  For example, patent protection would not be likely for a spreadsheet program or a simple mobile game, however software that makes some industrial process more efficient or that enables for more robust communication between remote devices could well be patentable.

What does all this mean for the electronics industry? In general, the prospects for getting patent protection for innovative ideas that are implemented in embedded software are good, since the interaction between the software and the hardware it controls often provides a sufficient degree of “technical character”. Even on more general processing devices, such as smartphones, novel firmware ideas that solve problems at a low level (e.g., memory management, security, power efficiency, image processing) may be patentable. But the storyboard for a new computer game is unlikely to be.

As ever, the devil is in the detail.


For more information see https://www.dehns.com