What CEOs Need to Do to Protect Software Based Inventions

Recent cases law and so called reforms to the U.S. patent system have made it more difficult for businesses to protect their software by way of patents. Case law in this area is very murky. In order to understand it, a good rule of thumb is to see if your software provides a technical solution to a technical problem. This is indeed the standard use in the European Patent Office.

Recent Acts and Case Law

One of the most prominent pieces of legislation in this arena is called the America Invents Act. The purpose of this act was to reform the patient system. One of the consequences of the AIA was that it became more difficult to sue multiple defendants within one lawsuit. A 2014 decision from the Supreme Court in the Alice Corp. v. CLS Bank International case shows how the courts have come down in recent years about software issues. Patents in that case were found to be invalid due to the fact that claims were tied to an abstract idea and implementing them on a computer platform was not determined to be enough to transform those ideas into patentable subject matter.

Software patents have remained controversial even in 2016. An October ruling from the U.S. Court of Appeals reveals that three patents asserted against multiple anti-virus companies were effectively invalid because they did not officially name a patentable invention for protection.

Recent case law in the United States suggest that an invention that provides a technical solution to a technical problem has a good chance of not only being granted a patent but the USPTO, but also withstanding scrutiny in court. This is a test that has long been used by the European Patent Office. At a high level this means that for a software invention to be patentable, the software should cause computations to happen more quickly through the use of novel or improved algorithms or rules. This might also include the inventive software causing a computer itself to operate more efficiently based on novel or improved algorithms or rules. This could mean better memory management or reduced CPU usage or similar features. In addition, if the invention contemplates inventive hardware then the patent application should definitely cover that. Furthermore, if the invention contemplates the use of new rules, specific for use in computing environment then that has a better chance of being deemed patent eligible. Modern society relies quite heavily on computer technology. It goes without saying that without software, a computer cannot properly operate. Hardware and software work together in collaboration for today’s information society. It is no wonder that protecting the intellectual property of any software is critical for all businesses not just the software industry. The protection of intellectual property of computer software has been highly debated across the international and national level. A draft directive on the patentability of a computer implemented inventions in the European Union has already been evaluated in order to simplify and systematize the interpretation of different country patentability requirements for inventions associated with computer software, including any business methods that are conducted over the computer. There are many different views across relative stakeholders in Europe and the same holds true in the United States. One of the most important concepts to remember in this process is to question what you wish to protect from your competitors if you move forward with intellectual property protection for a piece of software. Software could be incorporated on an apparatus or within a computer. When such software is distributed and reproduced on media, however, this is separate from the hardware. Software can provide multiple functions including monitoring communication network systems, regulating room temperature or controlling a machine. It can even be used to process social, financial or economic data in order to identify the highest possible return on an investment or to verify a new scientific theory. Not all types of software related innovation, however, are eligible to enjoy patent protection. There are several different core tenants involved in this. An invention has to meet multiple criteria in order to apply. These include:

  • The invention must include patentable subject matter
  • The invention must be capable of industrial applications
  • The software must be new
  • The software must involve inventive steps or be non-obvious
  • The software must have the disclosure of the invention in the patent application and this must meet substantive and formal standards

Particular attention should also be given to any requirements associated with inventive steps and patentable subject matter. When a patent is granted for an invention, this must be described as a solution to a technical problem. While there is currently no international definition of an invention and every national law might have separate answers for this question, in many countries inventions are required to have a solution using the laws of nature or a technical character. For examples, methods of doing business, mathematical methods and economic theories are not in and of themselves patentable inventions under this explanation. In order to have a patent, the invention must not be so obvious to a person skilled in the art having regard to that prior art. It is not enough to simply claim that the invention is new.

As is illustrated above, the issues associated with intellectual property as it relates to software are extremely complex and require the insight of an experienced intellectual property attorney. A New Jersey intellectual property attorney should be the first person you identify to help you with a complex case. Do not wait to get the help you need.