Issue date: 16th August, 2024
How to patent software innovations?
Lead Story
Govind Kedia is an IAM300 Global IP Leader. He runs a leading Intellectual Property consulting firm "Arctic Invent" based in Noida (India). He specializes in the deep-tech domain and has helped over 500 startups register 5000 IP Rights.
Can software be patented?
Well, the short answer is YES.
The common myth
There's a lot of confusion about software patents. In the last decade or so, there's been a fair amount of hostility and discussion in the patent office over granting software patents.
Historically, patents have been useful for protecting:
- Machines: Things like cars and tractors
- Processes: Methods of manufacturing something
- Compositions of Matter: Chemical compounds
- Articles of Manufacture: Items that come out of a manufacturing process, such as pencils
Why is software different?
Software is a bit of an oddball because it doesn't fit neatly into one of these four categories. Consequently, a lot of analysis has gone into whether software itself is patentable.
The Evolution of Software Patents
Software patents really took off right before the dot-com boom in the late 1990s. During this period, there were a lot of abstract ideas being patented. There were some court cases in the US that were permissive with respect to software patents, and we began to see software patents increasing both in number and scope. Some would say that software patents got a little over the top because clever attorneys were finding ways of patenting very trivial ideas.
Navigating software patents in India is complex due to Section 3(k) of the patent law, which prohibits patenting software "per se." This ambiguity has led to ongoing debates about the patentability of software innovations.
The Indian Patent Office has attempted to clarify the situation through guidelines issued in 2013, 2016, and 2017. Earlier guidelines required "novel hardware" for software patents, but the 2017 revision shifted focus to the "technical effect" of the software. This change aimed to recognize software's potential for technical advancement, allowing patents for solutions that demonstrably solve technical problems or enhance technical processes, even without novel hardware components.
Changing Standards in the Patent Office
It took a while for the patent office to understand and apply this new standard. Consequently, for a number of years in the mid-2010s, it was very difficult to get a patent on a software product.
Now things are better on what "software patent" is, and the patent office has relaxed its standards for allowing software patents by specifically focusing on "technical problem and solution".
Business ideas and Abstract Ideas
The offices around the world have strongly come out against the patenting of abstract ideas. For example, it's not possible to get a patent on the abstract idea of buying low and selling high. Generally, ideas that have been in the public domain can't receive a patent just by executing computer steps to perform those ideas.
What is Patentable in Software?
The Technical Effect Test
The European Patent Office uses a standard called the Technical Effect Test. It requires that any patent involving software or a process must do something useful, producing some "technical effect." We might say that this technical effect test is also useful as we think about what is patentable in the US as well. This concept is slightly stricter than current US standards.
Example of a Technical Effect
So, what would be an example of a technical effect?
A computer program that controls a machine to cure rubber and produce tires would be an example. You pour liquid rubber into a machine, a computer program does some processing, and a few minutes later, the machine opens and out rolls a tire. That would be a technical effect generated by a computer program.
Strategies for Getting Software Patents
Going Back to Basic Principles
To avoid abstract ideas when trying to patent software, it's useful to go back to the basic principles of patenting. We want our inventions to resemble machines or processes. Tying your computer software to a machine significantly increases the likelihood of obtaining a patent.
The Only by Computer Concept
The Only by Computer concept is based on the idea that some functions can only be performed by a computer software program. For example, searching for malware on a network requires a computer program. This makes it seem as though a computer program performing such a function would be patentable.
Feedback Loops
Patents for software that employs feedback to create an improving process. Example: Artificial Intelligence uses feedback loops to improve with each cycle. We know that patents for AI software programs are currently being widely allowed.
Hardware component
Specific Hardware Integration: When a software invention interacts with specific hardware components in a novel way to achieve a technical effect, it becomes easy to overcome abstract idea. Imagine a program that optimizes power usage in a computer by dynamically adjusting settings based on real-time hardware data (CPU temperature, fan speed). This specific hardware interaction strengthens the claim.
There are many other strategies which can be employed to get a protection on your software innovation. The best is to discuss with patent professional and spend sometime in co-ideating.
Conclusion
To summarize, when thinking about avoiding abstract ideas in software patents, consider:
- Is it something that only a computer program can do?
- Does it involve a feedback loop that improves the system with each cycle?
- Does including hardware or mentioning technical effects isn't enough?
The key is to demonstrate how the specific hardware interaction or the technical effect achieved by the software is novel, non-obvious, and solves a real technical problem. By incorporating these points, you can significantly improve the strength of your software patent claims.
Quote of the Week
Marc Andreessen: "Software is eating the world."
Important Updates
[Jobs at Arctic Invent] Patent Drafter - Patent/Senior Patent Associate (Patent Drafter) Job Location: Noida, Work from Office (mandatory) (Apply Here)
[Jobs at Arctic Invent] IP Analyst (Patent Paralegal) - Job Location: Noida, Work from Office (mandatory) (Apply Here)
[Aug, 30, 2024; 5.30pm] Registration for Patent/Trademark Exam 2025 - Indian Patent Office has extended Application Form filing for Patent and Trademark Agent Examination 2025 (Guidelines to register)
[Oct, 23-25, 2024] Nvidia AI Summit - Discover What's Possible With AI. Fireside Chat With CEO, Jensen Huang (Nvidia AI Summit)
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