Emerging Challenges of Software & Patents  

Whenever people wonder whether or not software is patentable, they are often inventors or software developers concerned about their invention and whether they can get any legal protection for it.  

But, before we get into the subject of software and patents, it is important to first establish that patents and copyright work differently. Copyright relates to the rights conferred on a creator’s work, like a book or song. But patents, in relation to software, relate to the ideas inside the software or computer program and the technical effect achieved by this.  

Most times, people often look towards copyright as the only protection available to software innovations; but this is not the case, as we will find out later in this article. The subject of patent protection for software is nuanced, and the right answer may vary from country to country. But in this article, we will focus on relevant EU laws and countries within this jurisdiction. 

What Is a Software Patent? 

This refers to the specific patent protection for computer software. Software, in this context, can mean anything from a regular software program to a mobile app.  

For any software to enjoy this protection, it must meet certain requirements that we will highlight much later in the article.  

Can Software Enjoy Patent Protection? 

As stated earlier, most people in tech believe that since creations like software innovations automatically enjoy copyright protection, there is no need to file for patent protection. But the problem is that copyright is not all-encompassing and does not bestow the same legal rights as patents. 

The safest bet is to see both options as complementary. Copyright alone only affords protection against piracy. But then, the creator must show a level of originality or intellectual exertion that justifies the protection sought. 

This means that the software developer must add personal touches to work. Otherwise, a copyright application will fail. 

When there is a copyright protection its holder can decide whom to allow the copying of a certain software code or whom to prevent from doing so.. Patents, on the other hand, expand the extent of intellectual property protection, are a different type of intellectual property thus offering other capabilities. It focuses on the technical aspect of the invention so in the case of software patents the software itself.  

However, the European Patent Convention clearly states in section 52 that computer programs are not patentable. But in cases where the execution of a computer code has a technical effect and is a solution to a technical issue, such an invention can enjoy patent protection.  

Thus, for a software developer, programmer, or any other applicant to successfully request patent protection, they must show that the solution provided in their work is unique and shows inventive steps. An inventive step in this context means that the novel addition or feature in the software must be something of value and not a trivial addition.  

So, the answer is simple; inventors can patent their software inventions, but on the condition that the software provides a solution to a technical problem. The question of what qualifies as a technical problem arises here because it is almost impossible to separate technical computer operations from their regular functions.  

For example, a mathematical solution may not enjoy patent protection. Other examples of technical solutions, according to the European Patent Office Board of Appeal, are e.g. the better control of robotic arm functions or an improved reception for radio signals. 

What Software Qualifies for Patent Protection? 

For any software to enjoy patent protection, it must meet certain requirements— the creation must be among others new and solve an existing technical problem.  

The types of software that can enjoy patent protection in the UK are classified under two headings: software relating to computers and software relating to physical objects. 

The former covers things like user authentication software, encryption, and other security-related software. It also covers AI software, video and image processing, data speed, and more.  

The latter covers software relating to electric vehicles, industrial machines, handheld devices, and more. Although the list is not exhaustive, it includes items currently enjoying patent protection under the EPO and the UK Intellectual Property Office.  

The UK adopts a strict approach to approving software patent applications. It conducts a four-part test on each application to determine if the software is patentable, based on an old EPO decision in a 2006 lawsuit involving Aerotel Ltd, Telco Holdings Ltd, and Macrossan’s Application.   

This four-part test first involves interpreting the software patent claim, establishing whether the creator made sufficient contributions and what these contributions are, checking whether the contribution is valid, and verifying whether it is technical enough to warrant the patent protection sought. 

Challenges Associated With Patenting Software  

Here are some of the common challenges associated with software patent applications: 

1. The complexity of the Patent Process 

The concept of a software patent is rather complex and will require the expert knowledge of a patent attorney. Adopting a DIY approach in writing a patent application may be cheaper on the short run but will likely have unintended consequences in the long run, which could potentially lead to the fact that no patent protection can be achieved. 

 An experienced patent attorney understands the rudiments of the procedure and will help the applicant to submit an airtight patent application and defend it if (and when) the need arises. 

One thing that makes the patent application process complex is that describing software technology and innovations is often difficult. This is because they entail abstract ideas, making it difficult to understand and establish whether the innovation should enjoy copyright protection.  

2. Cost  

The cost that goes into filing a patent application may discourage intended persons from going ahead with it. But, one can attribute these costs to the many factors that go into a software patent application. 

For one, a prior art search to verify that a patent protection on the subject matter does not already exist. Law firms may charge as high as €4000 to conduct a comprehensive search identifying similar existing patents that may be an issue to the application. 

Following the search, the attorney will typically provide legal advice on the extent of patent protection an applicant can claim and whether proceeding with the patent application is in the applicant’s best interest. 

Then, there is the issue of preparing the patent application— that is, provided everything else is in order, and the creator decides to proceed with the application. The application process can cost thousands of euros, in the five-figure range. 

This is because it involves drafting and filing fees, the prices of which may vary depending on whether or not the software in question is simple or complex. Supposing the applicant needs to amend the application (especially if the application is challenged) somewhere along the line. In that case, the patent application will attract further charges. 

Furthermore, one has to keep in mind that patents are national rights, meaning that in case a patent protection should be sought in multiple countries, in each of these countries a separate patent application needs to requested. Hereby, additional cost for creating and filing this patent application per country will apply. 

3. Procedure Is Long and Uncertain 

The length of time required for a patent application to go through scrutiny before approval may be long, normally a few years. By the time the relevant authorities grant the patent, the software may have outlived its usefulness already.  

In the US, for example, it may take up to four years for the Patent and Trademark Office to approve an application. It goes without saying that there are no guarantees that after waiting so long, the relevant authority will grant the application. In case the patent application does not fulfill the requirements that were addressed earlier, no patent protection will be granted. 

4. Software Has a Short Commercial Shelf-life 

The world is moving fast, and the demand for updated technological innovations is growing daily. As such, software innovations that were relevant a few years back are quickly becoming obsolete due to newer technologies that meet the growing modern demands.  

In contrast, mechanical and pharmaceutical inventions have a better shelf life, as their utility can span decades, justifying the money and stress expended on getting patent protection for them.  

The implication of a software patent’s short shelf life is that only those who act fast will benefit. For instance, consider software with a commercial shelf life of about three years, and it takes competitors a year or more to match the technology. In that case, only the first mover will enjoy exclusivity for that period.  

Conclusion 

Generally, any invention that is unique and solves a technical problem can enjoy patent protection. But for software, there is a bit of gray area, as this is an entirely complicated field.  

However, for any software to enjoy patent protection, it must be a new invention with a clear innovation added to it. Patent examiners from relevant authorities look out for uniqueness and other factors before potentially granting an application. Additionally, the handling of software patents may vary depending on the jurisdiction.  

The article further considered some of the challenges associated with patent applications, like the costs, application duration, and complexity.