26 September 2022
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New developments in software are continuing to change the world we live in at a rapid pace. Patent protection can be an extremely useful tool for securing protection for software-related developments. However, obtaining patent protection for software can be challenging.

Why can it be difficult to patent software-related inventions?

European patent law explicitly excludes computer programs from patent protection. However, this exclusion is applied in a complicated manner such that it is still possible, in certain circumstances, to obtain European patent protection for inventions relating to software.

Put simply, the EPO believes that in order for a claimed invention relating to software to be patentable, the claimed invention must define “technical” features which solve a “technical problem” in a non-obvious manner. Therefore, even if software is based on an original idea, an applicant may struggle to obtain patent protection in Europe if that underlying idea relates to a non-technical process.

The European Patent Office has always resisted providing clear guidance on what is/isn’t “technical”. Consequently, it is difficult for applicants to know whether or not their software-related invention will be viewed as eligible for patent protection in Europe.

A common experience at the EPO is to file a software-related application which receives multiple patent eligibility objections because it is, according to the EPO, not “technical”. This can result in multiple rounds of examination, incurring significant costs until eventually the application is refused or abandoned. Possible amendments may be attempted during prosecution to try to steer the application towards more “technical” subject matter. However, even if such attempts are made, it can be difficult to get a positive result if the requisite “technical” subject matter has not been included in the application from the outset, or if the invention itself is not the sort of development that the EPO views as patentable.

How to get patent protection for software-related inventions in Europe

It’s not impossible to get patent protection for software-related inventions in Europe, but in view of the issues discussed above, it is generally best to seek advice from a qualified European patent attorney at an early stage.

The key is to identify whether a software invention is likely to encounter patent eligibility issues before incurring substantial patenting costs.

If the software invention is deemed likely to face severe eligibility issues from the outset, then attempts to patent the invention can be abandoned before substantial costs have been incurred.

If, on the other hand, the software invention is on the borderline of what might be considered patent eligible, then work can be done during the drafting of a patent application to emphasise the technical character of the invention, and hence improve the prospects for getting patent protection. This can help pave the way for successful prosecution of the application.

Experience is key, and Mewburn Ellis LLP are well placed to offer advice in this area, owing to our many years of experience working in this field. This experience includes the drafting and successful prosecution of hundreds of software-related patent applications at the EPO and the UKIPO.

Getting an early opinion regarding patent eligibility

In view of the issues discussed above, we have launched a new fixed-fee service for providing patent eligibility opinions on software patents to help applicants identify when a software invention is likely to encounter patent eligibility issues at the EPO before they incur substantial filing costs.

As part of this opinion service, a prospective patent application is assigned to one of the following categories, along with a reasoned opinion:

(A): Low probability of encountering a problematic patent eligibility objection at the EPO
(B): Medium probability of encountering a problematic patent eligibility objection at the EPO
(C): High probability of encountering a problematic* patent eligibility objection at the EPO

For applications assigned to category (A), an applicant can move forward with their software-related application with confidence that patent eligibility is unlikely to be a problem.

For applications assigned to category (B), an applicant can potentially invest in additional drafting work to maximise the prospects for success in Europe, or else reconsider whether to proceed.

For applications assigned to category (C), an applicant may abandon patenting efforts at an early stage to minimise cost or can move forward in the knowledge that there could be severe obstacles to obtaining patent protection.

Our hope is that this new opinion service will empower applicants to anticipate and address potential patent eligibility issues, prior to incurring the substantial costs associated with filing and prosecuting a European patent application.

Deeper insights

Further insights into how software patents are handled by the EPO can be found in our in-depth study, and also our recent special report which sought to find out whether the EPO and UKIPO approaches to patent eligibility produce the same results in practice, by asking the following questions:

Q1. Is there a difference in the way that the UKIPO and EPO raise patent eligibility objections against claims that relate to essentially the same invention?
Q2. Does the nature of the software invention claimed make a difference to whether patent eligibility objections will be raised by the UKIPO and EPO?
Q3. How does the existence of a patent eligibility objection influence the outcome of patent examination at the UKIPO and EPO?

A key finding of this report was that subtle differences in the way in which software inventions are handled by the EPO and UKIPO can be used by savvy applicants to maximise their prospects for obtaining European patent protection for software inventions.

James is a Partner and Patent Attorney at Mewburn Ellis. He has a wide range of experience in patent drafting and prosecution at both the European Patent Office (EPO) and UK Intellectual Property Office (UKIPO) across a variety of industry sectors. James has particular expertise in the patentability of software and business-related inventions in Europe.

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