What are the challenges in obtaining patent protection for software-related inventions?

Software inventions are increasingly important today because they enable automation, speed, connectivity, innovation, and effective data management. Businesses who innovate using software gain competitive advantage over more traditional businesses. Software is also one of the most valuable assets of technology companies today, and the most valuable and wealthy companies such as Microsoft, Google, Apple, Meta, etc have leveraged software inventions to leapfrog over their competitors. More specifically, with the advent of generative AI technologies like ChatGPT 4, text and images can be processed for a wide variety of use cases such as for marketing, customer support, personalized recommendations, e-commerce, and healthcare.

However, despite the prevalence and increasing importance of software inventions, many of them remain unprotected. In order to convert the value generated from software into assets, they need to be protected by registering them as Intellectual Property Rights that provide software owners with leverage and competitive advantage. There are many challenges that remain unaddressed in obtaining patent protection for software-related inventions, such as:

  1. A lack of awareness on patentability of software-related inventions

When we speak with founders of startups, they often come with assumptions that software is not patentable. They have heard this from what they consider to be reliable sources such as investors, mentors, and even IP lawyers! Even IP lawyers have told startups that the only form of IP protection for software is copyright. No doubt, there are certain challenges in patenting software-related inventions, but these challenges can be overcome with strategy and expertise. 

  1.  Subject matter eligibility

One of the biggest challenges in patenting software-related inventions is subject matter eligibility. For example, in the US, in order for a software invention to be eligible for patent protection, it must be directed to a “non-abstract” or “tangible” aspect of the invention that is not a mere idea or mental process. The U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International in 2014 established a two-step framework for analyzing whether software patents meet the subject matter eligibility requirement. Step one requires determining whether the claims of the patent are directed to a patent-ineligible concept, such as an abstract idea or natural phenomenon. Step two requires analyzing whether the elements of the claim, either alone or in combination, provide an inventive concept that transforms the nature of the claim into a patent-eligible application of the abstract idea.

  1. Criteria vary from country to country

However, in the European patent office, the criteria include 

  1. Technical character: The invention must have a technical character, meaning it solves a technical problem by technical means.
  2. Technical effect: The invention must have a technical effect, meaning it results in a change in the physical world or a tangible object.

In India, technical effect, as per the case of Ferid Allani vs Union Of India is defined as a solution to a technical problem, which the invention taken as a whole, tends to overcome. A few general examples of technical effect are Higher speed, Reduced hard-disk access time, More economical use of memory, More efficient database search strategy, More effective data compression techniques, Improved user interface, Better control of robotic arm, Improved reception/transmission of a radio signal, etc. 

  1. Have to keep up with case law, guidelines and latest developments

The practice of patent prosecution in the software arts has been undergoing a lot of rapid changes due to case law, revisions in guidelines issued by the patent offices, and latest developments in technologies including AI. Hence, a strategy, approach, or best practice that would have worked for US patents prior to the Alice case in 2014 would have failed afterwards. Similarly, the Indian patent practice was hugely impacted by the manual for computer-related inventions guidelines that was released in 2017, and then by the Ferid Allani case in 2019. Hence, failure to keep up with these developments would give sub-optimal results.

  1. Some drawings have to be architected 

Patent drawings are an important part of a patent application and can play a crucial role in securing patent protection for an invention. They help to enhance understanding, support the claims, enable international protection, and meet legal requirements. In electronics patent applications, drawings are typically used to illustrate the circuit diagrams, component layouts, and other aspects of the electronic devices. In mechanical patent applications, drawings are used to illustrate the physical structure and operation of the invention. These drawings can include exploded views, cross-sectional views, perspective views, and other technical illustrations that help to show how the various parts of the invention fit together and how they move. However, for software inventions, it is rare for inventors to provide drawings. Hence, it is upto to the patent professional to use their creativity to come up with their own drawings to make the invention appear to be less abstract and more tangible to satisfy patentability criteria. 

  1. Examples have to described to satisfy enablement

In general, to satisfy the enablement requirement, the detailed description in a patent application must provide sufficient information to enable someone having at least ordinary skill in the relevant field to make and use the invention without undue experimentation. This can be particularly challenging for software inventions, as software can be complex and difficult to describe in detail. Some common pitfalls in drafting software patent applications are when the invention is claimed from the server’s perspective, but the description only focuses on the front end or the user interface, or vice versa.  The description also must include relevant examples. Sometimes these examples are not readily available, and it takes extra effort from the patent professional to work in tandem with the inventor to come up with relevant examples that enable the claimed subject matter.

  1. Experimental data 

Experimental data can play a key role in a patent application by providing evidence of the technical effect of the invention, supporting the enablement requirement, distinguishing the invention from prior art, and strengthening the patent. It is therefore advisable to include experimental data whenever possible, especially in cases where the invention is complex or the claimed benefits are not immediately apparent. In software patents, it is particularly challenging to describe the benefits of an invention, particularly when it is as abstract as an AI model or an algorithm, and prove that the invention has real and tangible benefits. Inventors typically tend to focus on describing the algorithmic or technical aspects, and so the burden of describing the invention in a tangible way and bringing out the advantages of the invention often falls on the patent professional.

  1. Foreign applicants applying in the US

The US is a major market for innovative technology companies, and particularly for software products. Furthermore, the USPTO also afford patent protection for software-related inventions, and has a robust legal system for enforcement of patents. Hence, it is increasingly common for companies that are based outside the US to apply for US patents. However, foreign applicants have to be represented by a US patent agent in order to file and prosecute a US patent application. Since foreign applicants typically appoint patent agents in their own countries, they tend to depend on their local counsel to help them through the US patent process. However, since the local counsel may typically lack expertise in US patent law, their experience of getting a US patent is mostly out of their control, and dependent on their US counsel and the relationship they have. Also, having more intermediaries in the process not only makes the process more opaque and uncertain but also more expensive.

  1. Applying in multiple countries

As the number of countries that the applicant wants to pursue patent protection for, increases, so does the complexity. There are two routes for building international patent portfolios, namely through the Paris Convention, or through the PCT. When the number of countries is more, applicants typically take the PCT route, and one single patent application draft (which is filed as a PCT application) is filed as it is or with translations (if applicable) in multiple countries. However, unless this PCT application is prepared while taking into consideration the patent laws and practices of each of these countries, the applicant will run into lots of obstacles in getting their patents granted in at least some of these countries. Since, as discussed earlier, the patent laws differ from one country or jurisdiction to another, a one-size-fits-all approach does not work. 

  1.  Challenges while applying in the US, the EPO, and India

Let us take a specific example of an Indian applicant applying for patents for software-related inventions in the US, the EPO, and India. One of the challenges is with respect to which country to file first. Whereas some Indian applicants may not be interested in an Indian patent, they still have to comply with Indian laws if any of the inventors is a resident of India. However, this may be in conflict with US laws, if the invention was made (even partially) in the US. Nowadays, with teams distributed across countries, this can be a challenge. If they choose a US patent law the costs can be high and they need to work across different time zones. Moreover, the US patent law firm may not have the expertise in European patent law or Indian patent law. Most firms lack expertise in other countries. If they choose an Indian firm, they are at the mercy of the US and European counsel of the Indian firm. Hence, no matter which firm they choose, they end up compromising on their patents in one or more of these jurisdictions.

Why Metayage?

At Metayage, we operate an Indian entity (Metayage Private Limited) as well as a US entity (Metayage, Inc). We have built patent portfolios in all major markets around the world including in the US, EPO, UKIPO, India, Japan, China, Australia, Canada, Singapore, and South Korea. We have specialised expertise in software patents in these jurisdictions, as we have studied and kept ourselves up to date with case law, developments, and best practices. Unlike other firms that rely on their foreign associates completely, and only interface between the client and the associates, we at Metayage add substantial value through our own expertise and instruct our associates to get the best outcomes and provide transparency to our clients. If you have a software-related invention that you want to explore patent protection for get in touch with us by sending an email to [email protected]