Using Intellectual Property Rights To Protect Software – Patents

Can patents protect software?

Many people know that intellectual property rights can protect software. Some of those rights do not need to be registered – such as confidential information or copyright – which means that that protection arises automatically.

Other types of intellectual property rights require a successful application for registration to be made, before they can be relied upon.

This blog (being the third in our IP in software series) focuses on patents and how they can be used to protect software.

Patents and software

To put it simply, patents protect inventions that are:

  1. New;
  2. Inventive – which means that the invention is not an obvious development within the industry;
  3. Capable of industrial application; and
  4. Not excluded from patentability.

A patent can be used to prevent an unauthorised third party from undertaking certain commercial activities in relation to the product or process protected by the patent. This remains the case, regardless of whether the product or process has been copied by the third party, or even if the third party was completely unaware of your product or process.

So, can software be protected by a patent?

Patents and software have quite a complicated relationship in the UK and not all software is capable of patent protection. That remains the case regardless of whether the software is new, inventive and capable of industrial application.

This is because a “program for a computer” falls under subject matter which is excluded from patentability under the Patents Act 1977. Because of this, many people mistakenly believe that patent protection is not available for software. However, the exclusion will only apply “to the extent that a patent or application for a patent relates to that thing as such.”

Put another way, if the patent is for an invention that is implemented by software, provided that the patent concerns a technical contribution that is not excluded from patentability, the application for the patent should be granted.

A patent will, therefore, not be granted for software that merely automates a business method (as this is also excluded from patentability), even if the software does so more efficiently than other methods that would otherwise be available (e.g. manual processing of information).

However, software which provides a technical solution to a technical problem (such as solving a problem within the computer so as to, for example, improve reliability or performance) will likely qualify for patent protection, assuming the other criteria are met.

Is there anything I should do before applying to register a patent?

  1. Keep the invention confidential! A disclosure of the invention, anywhere in the world, before filing the patent application will mean that your invention is no longer new. Consequently, it will not meet the criteria of patentability;
  2. Instruct a patent attorney. While it is possible for a business to apply to register a patent without assistance, this does increase the risk of the application being rejected or alternatively, the claims not being drafted so as to obtain the protection that you want. Notwithstanding the fact that patent protection can be available for inventions concerning software, the area is fraught with difficulty and so professional advice should be sought early on and throughout the process;
  3. Ensure that you own the invention – the usual position is that employer will own inventions created by their employees but much will depend on the scope of the employee’s duties. Employment contracts should be clearly drafted so as to avoid any issues over ownership;
  4. Have a filing strategy in mind e.g. where else, beyond the UK, would you want patent protection? Would applying for an EU patent be more cost effective? If there are other jurisdictions where you would want protection, ensure that you have identified these and you are in a position to file applications in those jurisdictions within the priority period.

Patents Software

How can Nelsons help?

Emma Ward is a Partner in our Dispute Resolution team, specialising in contentious intellectual property matters.

If you have any queries regarding the subjects discussed in this article, please contact Emma or another member of the team in Derby, Leicester or Nottingham on 0800 024 1976 or via our online form.