Can You Patent a Computer Program?
If you have invented a new computer program that solves a specific technical problem, you can seek to patent the program. Software patents attract more controversy than those for other fields, however. Unfortunately, not everyone is pleased with the results. Below, we’ll look at some of the key factors for computer program patentability. Continue reading to learn more about the process and what you need to do to be eligible to file a patent application.
Unpatentable computer program
A new law, the New Zealand Patents Act 2013, contains examples of what is not patentable in computer programs. This law will be effective on 13 September 2014. It is unlikely to grant patent protection to every computer program, but it may serve as a useful reference point for those who want to create a computer program. However, many argue that computer programs are unpatentable based on their lack of utility. For example, a software program could be created to automatically complete legal documents.
In the recent case of Alice Corp. v. CLS Bank, the Supreme Court ruled that a computer-implemented invention for managing settlement risk is unpatentable if it is “directed” to an abstract idea. The ruling established a two-part test for patentability. The first part of the test examines whether the claim is “directed to” an abstract idea. The second step determines whether the claim is “nonobvious”.
When assessing the inventive step of a computer program, the Federal Circuit generally favors the Problem-Solution approach. This approach first distinguishes between technical and non-technical aspects of the invention. It then adds a step to evaluate the unexpected technical effect of the invention. Because of the technical particularity of this field, the number of steps involved with this approach tends to be higher.
To evaluate an invention’s ‘inventive step’, an examiner should first consider whether it has a technical character. Essentially, the claim must cause an effect that is not simply the result of normal physical interactions between the computer and the program. Examples of such effects include improving the efficiency of the manufacturing process, increasing the security of the communication channel, or securing the boot integrity of a computer.
In order to determine if a computer program meets the requirements for a patent, a skilled person would not have reached the claimed result without the prior art. Often, computer programs incorporate features or steps that are novel and inventive, providing a potential industrial application. Often, the software is used by hardware to deliver effects beyond the physical interaction. In addition to meeting the classical requirements of patentability, computer programs often possess unique features.
In some cases, a patent application can be rejected due to obviousness if there is no evidence that the invention would not be familiar to a person skilled in the art. The construction of the term ‘person skilled in the art’ sets the threshold for an ‘obvious’ application. This threshold is difficult to meet when a computer program is used in ways that are outside of the normal computer user’s daily routine.
When patenting computer programs, determining the lack of obviousness is vital. This requirement is very subjective and subject to debate. A skilled patent attorney can help you understand this requirement. If your invention is not obvious, you can’t obtain a patent. Here’s how to determine whether your invention is not obvious:
First, consider the evidence of ordinary skill and knowledge. A prototypical example of obviousness is invention A+B. If someone skilled in the art would know how to use invention A+B, then it would be obvious. Similarly, a product based on the combination of A+B would be known to a person with ordinary skill in the art. This is a strong secondary consideration. However, the use of ordinary skill or common sense by other individuals could be considered “common knowledge” by someone with little or no training or experience in the field.
In addition to being useful, software must be unique and tied to a machine. To be patentable, the software must be novel, useful, and not obvious to a person with ordinary skill in the art at the time of filing the patent application. Patent practitioners understand the complexities involved in determining whether software is software or something more. In addition to patentability, non-obviousness is a critical factor in assessing the value of software inventions.
While the determination of obviousness is based on legal considerations, the Office personnel’s work fulfills a crucial factfinder role. They must include findings of fact about the state of the art, teachings of references, and ordinary skill in the field. Furthermore, a successful combination of A+B does not work in the way the examiner hypothesized or predicted. Failure to meet expectations is also a valid argument for non-obviousness.
Using conventional components in an unconventional way
While patent law is based on the idea of “invention,” Alice is a very different case. The claims in Alice refer to the abstract idea of data collection, display, and manipulation. While remote access to information is an age-old practice, claims in Alice recite generic computer implementations of the abstract idea. In the case at hand, claims in Alice involved a novel method for tracking movement and application of physics. The court invalidated the patent under the case In re Nuijten (2007), and ruled against the patent.
Challenges to getting a software patent
Some developers and techies argue that software should not be patentable and argue that software patents hinder innovation. The argument is rooted in the fact that most software is not novel and nonobvious. As a result, patents for software do not grant full protection as all inventions must be new and not obvious. Brad Feld outlines several of the main criticisms of software patents. Here are some other reasons why software should not be patentable:
Many software developers are surprised to learn that a lot of software patents cover conventional processes, such as user interfaces or machine instructions. As a result, software developers worry about potential patent infringement claims on thousands of processes. In some cases, a software patent can be filed on a portion of a program that covers only one function. In such a case, a software patent may not even cover a complete invention.
Nevertheless, software patents are valuable in many ways. While they provide protection for users, software patents can also be challenged by an infringer. One solution is to limit the number of software patents. By doing so, it avoids the untenable position of denying all applications. This solution, however, requires considerable expertise and consensus between various stakeholders. Further, patent-infringing software is vulnerable to a challenge from an infringer, so it is important to work with a firm that understands the intricacies of software inventions.
Large software companies can afford patent costs, but small companies cannot. Independent developers typically receive royalties of ten to fifteen percent from publishers who distribute their products. To recover costs, they rely on a modest margin, which would quickly be wiped out if they had to pay royalty payments to the patent holders. For smaller companies, patent costs are a barrier to entry. And even if they did, they would still be unlikely to survive a challenge.