Software Patents

Is your software patentable?

Recent Australian court case decisions have made it clear that not all software is patentable. As such, how do you tell if your software is patentable?

Two important Australian court cases, Research Affiliates LLC and RPL Central show the demarcation where software becomes patentable

Let’s look at these two important Australian court cases in more detail to find the demarcation between patentable and non-patentable software:

#	Court case 1	Court case 2
Court Case	Research Affiliates LLC	RPL Central
Which Australian Patent?	Patent Application 2005213293	Patent Application 2009100601
What was the patent about?	The invention used complex computer implemented arithmetic formulae to create a novel system of indexing a securities market. In other words, the invention was a tool to perform equations.	The retrieval of relevant data from a remotely located server via the internet and the generation of questions for calculating an individual’s competency according to a recognised qualification standard.
Exemplary Diagram
Verdict	NOT PATENTABLE	PATENTABLE
Why?	Mere computer implementation of an otherwise non-patentable abstract idea does not confer patentability	The computer is inextricably linked with the invention itself and is therefore patentable.

As such, at present, in Australia, the demarcation as to whether as to whether your software related invention is patentable is whether the involvement of the computing device is inextricably linked to the invention itself.

Simply put, something that is not patentable does not become patentable if simply implemented by a computer.

How we patent software

Let’s look at the strategies we employ when patenting software related inventions in Australia and around the world:

Strategy 1: Drafting patentable software patent applications

As is clear from the above court cases, not all software is patentable and oftentimes, whether your software related patent application is deemed to be patentable during examination depends on whether your patent specification has been prepared from the correct technical perspective to show the requisite “inextricable linkage” between the steps performed by the computer software and the underlying technical architecture.

As such, we prepare patent specifications from the correct technical perspective, so as to maximise the patentability of our client’s application.

For example, have a look at an exemplary image and associated description (click for more detail) from one of our patent specifications relating to a mobile phone app related invention:

As it is clear from the above, our patent specifications are technically thorough. This significantly reduces the possibility of the examiner forming the opinion that your software related application is simply an abstract idea or “mere business method” and is therefore not patentable.

Strategy 2: Enhancing the enforceability of software patents

Patentec further claims your software invention from multiple perspectives to ringfence different system actors to maximise the enforceability of the eventually granted patents.

Consider the following diagram:

Ringfencing different system actors enhances the enforceability of the patent

As can be seen:

• the broad system claim covers the entire operation of the software related invention providing for indirect infringement of all of the system actors;
• the service provider claims allows for direct infringement of the patent by the operator of the host server;
• the end user claims allow for direct infringement of the patent by the customer;
• the computer method claim provides for a technology agnoistic claim to cover technical variations; and
• the computer code claims protects anyone on possession of source code, or the uploading thereof to an app store, for example.

Strategy 3: Drafting international patent specifications

The rules relating to the patentability of software differ from country to country. Such differences arise from the different Patents Acts in each country and the frequent court cases interpreting these legislative provisions.

As such, patentability of software is a continually evolving aspect of patent law in countries around the world.

Patentec patent attorneys keeps abreast of these developments by following case decisions in countries around the world such as America and the US and more. Our attorneys are thought leaders in patenting of software related inventions around the world including in having lectured at peer-attended LegalWise seminars and having been quoted in IP journals on software patentability issues.

In this way, we prepare patent specifications in the correct manner so as to satisfy the patent law requirements in your chosen countries.

Strategy 4: We use our extensive expertise

Our attorneys specialise in the protection of software related inventions having previously worked as software engineers, and having previously patent protected software related inventions including for tech giants such as Google, Nokia Corporation and IBM.

The table below shows a subset of the software related patent specifications that our patent attorneys have recently drafted

Get in touch to protect your software

As such, if you have a commercially valuable software related invention, contact us today for a free consultation to discuss the patentable merit of your software application, identify patentable angles for protecting your software and choosing a patent strategy aligned to your commercialisation objectives.