In general, the main obstacle to obtaining patent protection for a new software invention is the need for that software invention to be viewed by the relevant patent office(s) as “patent eligible”, i.e. as the sort of invention for which patent protection can be obtained.
This blog seeks to provide some high-level guidance on what sorts of software invention are viewed as “patent eligible” by most major patent offices.
Unfortunately, most major patent offices deliberately avoid providing any definitive guidance on when a software invention will be viewed as patent eligible. But in general, for a new software process to be viewed as patent eligible, it is normally necessary that the new software process provides some useful “technical effect” in a non-obvious manner.
By way of example, software processes are likely to have a reasonable prospect of being viewed as patent eligible by major patent offices if they provide one of the following clearly technical effects:
- Improved control of an apparatus or process which is external to the computer running the software, where the external apparatus or process has a clearly technical purpose (e.g. control of a machine, device, or industrial process).
- Improved computational performance (e.g. faster computational speeds, or improved reliability).
- Improved ‘real world’ software outputs (e.g. enhanced image/video, more accurate estimates of parameters having a technical purpose).
- Improved security (e.g. better encryption).
Conversely, software processes are unlikely to be viewed as patent eligible if they provide one of the following non-technical effects:
- Improved business/commerce outcomes (e.g. software which controls financial transactions to achieve a positive business outcome).
- Improved administrative outcomes (e.g. software which organises objects/processes in a more convenient or intuitive way).
- Improved gameplay (for computer games).
- Improved look and/or feel.
Generally, when it comes to determining patent eligibility of a new software process, the technical effect of that process is more important than the software technique used to achieve that effect. So, for example, most patent offices will readily consider new software which incorporates a novel AI or machine learning technique as patent eligible, provided that novel AI/machine learning technique provides some sort of useful technical effect in a non-obvious manner. In contrast, software which applies a novel AI/machine learning technique to a non-technical (e.g. business-related) problem will not normally be seen as patent eligible because there is no technical effect. Equally, software which applies a known AI/machine learning technique to a known technical problem to produce an expected technical result will not normally be seen as patent eligible, because this will be seen as an “obvious” thing to try.
Of course, there are plenty of grey areas where patent eligibility is less certain than in the above cases. For example, a new software process may fall in such a grey area if the software process:
- Takes place entirely within a computer system and produces a technical effect that only occurs within the computer system (e.g. improved processing of data).
- Provides a medical benefit (e.g. an improved diagnosis).
- Provides an improved graphic user interface (“GUI”).
- Provides an improved simulation.
Summary
For software inventions falling in grey areas such as these, jurisdictional differences tend to become more pronounced, and certainty is generally not possible. So, where there is doubt about whether new software is patent eligible, it is highly advisable to seek advice from a patent attorney with relevant software experience.
