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What makes software inventive? When do you know if you’ve created something patentable?

(Image credit: Image source: Shutterstock/TechnoVectors)

As technology advances and becomes more integral in everything we do, some of the most important inventions coming through are innovations in software. But how do you protect a new piece of software? It’s easy to understand how a new and inventive object can be prototyped and patented to protect it from would-be copycats. But with something less tangible, like a piece of software, does it work in the same way? These are questions increasingly being asked of Albright IP. Patent Attorney Freddie Noble explains what makes software patentable and the importance of its technical aspects…

What is technical?

An awful lot of the software being developed day in, day out, doesn't have a particularly technical aspect. It’s often about applying the internet and computer-based processing to everyday business tasks, with the objective of making them more efficient. In these cases, there is unlikely to be a technical invention there to patent.

What we're looking for with software is an invention in a field of technology. I think the difficulty comes with the question: what is technical? It's one of those things that's very difficult to define.

Image processing is a great example of something that takes place inside a computer but has been seen as technical. If an image is blurred or wrongly exposed, and I create software to improve that image, then the detail of how I do that might be patentable, because that's a technical process. With artificial intelligence and machine learning, many of the applications are processes that fundamentally take place inside a computer – but on particular data, to achieve a specific result. There’s a good chance some of these types of system might be patentable.

With mobile phones there’s lots of scope for developing patentable software as well. For example, phones now come with all kinds of integrated compasses and accelerometers that try to understand where we are and what direction we’re going in, but they’re not always 100 per cent accurate. Increasing the accuracy of that is probably a technical problem. Phones are having more sensors crammed into them all the time, and we use them in some ways that are well known or expected. But there's a lot of room for technical invention by developing news ways to use the data from these sensors.

Software in engineering and manufacturing

Sometimes software is used in what are more obviously technical processes. We worked on a case where software was applied to help monitor the temperature of a furnace in a factory. The extreme heat of the furnace caused problems, as any temperature probes were destroyed if placed too near. So they were placed at a safe distance from the furnace, and clever software was developed to infer the actual temperature and trigger the appropriate response to the data – whether that be an alarm or an adjustment to the furnace. I think that’s one of the more clear-cut examples. Yes, the arrangement of probes and other physical parts of the system are most likely patentable, but in that kind of industrial application, the software itself can usually be patented too because what it is doing has a technical result.

The grey area

Unfortunately, the upfront cost of patenting software is often more than for a physical object. It's subjective and uncertain, and that makes it quite difficult to advise. With a mechanical device, we can usually have a short conversation and, after half an hour, pretty much know whether or not it’s worth applying for a patent.

With software, the answer after that same half an hour is likely to be ‘maybe’. We need to spend some time analysing what you've got. It’s more of an uncertain process. And for software we find that, particularly with the UK IPO, examiners raise objections fairly routinely. Therefore, getting a really clear idea of where the technical invention is at the outset is vital if there is going to be a good chance of success. This can have significant benefit downstream in bringing cases to grant and may help you choose where to put IP budget. 

Being clever about it

When it comes to software, it’s more important than ever that we speak to the technical people involved to get a full understanding of how it works and why it’s special. I think it becomes a little easier to assess when you ask yourself, who are the people involved? Would a technical person be able to make this happen as a matter of their ordinary skill or part of their day job? Or do they say, ‘This raised some real issues, I'm going to have to think about how it's done’? If it's the latter, and the technical person is really having to think about it in technical terms – then maybe the answer is that yes, it's patentable.

My advice is simple - if you think you have a piece of software that is technical, or represents an advancement in technology, it’s more important than ever to protect your intellectual property.

Freddie Noble, UK & European Patent Attorney, Albright IP