Patents for computer implemented inventions (software patents)

Patents can be a valuable addition to the portfolio of any start-up. Having a provisional patent application (or better yet, a granted patent) can be a good signal to send to potential investors and partners that you've created real value in your business and have taken steps to protect it. An enforceable patent can also be a great way to enshrine your competitive advantage.

But when it comes to obtaining patents for start-ups, there are a number of hurdles to consider before heading down this path. Patents can seem expensive for lean start-ups (although not as expensive as many people think) and can take longer to process than start-ups want to wait.

On top of this, it can be difficult for tech start-ups to successfully get applications through to a point where it can be enforced. This is due to the 'manner of manufacture' rule and the way that it applies to software and the general field of computer implemented inventions.

Consider other strategies which don't rely on patents such as being first to marketkeeping your technology secret or making your tech open source. If you still think patents are the right way to go, then here's what you need to get one.

‘Manner of manufacture’

We examine patent applications against a range of criteria. In simple terms these are:

  1. Novelty – is the invention different to what has been done before?
  2. Inventive step – Is it different enough?
  3. Manner of manufacture – Is it suitable for patent protection?

Be warned, the manner of manufacture requirement isn’t a simple test.

In the world of digital business this raises the question of whether you can get a patent for methods or algorithms when they are implemented using a computer.

For computer implemented inventions, it essentially boils down to whether the ‘substance’ of the invention is a technical innovation (which is patentable) versus a business innovation (which isn’t patentable).

Determining the substance

So how do you define the ‘substance’ of the invention?

This comes down to how the invention works. The substance will be found in the improvement it makes over what’s already known in that field.

Before you file for a patent application ask yourself: does the innovation let the computer perform an action which it couldn’t perform before? Generally, if it does more than just use the computer for its expected routine functions, then the invention will pass the manner of manufacture test, as these non-routine functions would involve a technical innovation. For example, if you found a way to make the computer process data in a faster way, or store data more efficiently than what was previously known, then (novelty and inventive step tests aside) you will have a patentable invention.

On the other hand, if you use a computer for its known functions and the only innovations lie within a method of doing business, your invention won’t be patentable because the substance of the invention doesn’t involve a technical innovation. Known functions can include:

  • data storage
  • display
  • data processing
  • the basic operation of GPS depending on the type of invention.

So what about smart phone apps? Many apps will simply perform these known processes in a new business model. This means the substance of many smartphone apps aren’t patentable.

Examples

What can be patented

What can’t be patented

An improved user interface for executing a financial trade by selecting trade parameters such as price or quantity, where the user simply moves a cursor with a mouse over designated areas of screen to select each parameter rather than clicking, and executes the trade based on the selected parameters.

A method of creating an index of financial securities on a computer, where each stock is given a weighted value.

Why: The substance of the invention lies in the user interface if this kind of interface wasn’t previously known, rather than the trade itself. The improvement to the interface provides a technical benefit as it allows actions to be completed in a more efficient manner without clicks.

Why: The substance of the invention lies in the financial scheme with the computer being used for its generic data storage and processing functions. This substance is regarded as a business innovation.

A new improvement to the processing or storage architecture of a blockchain, or alterations to handle types of information or transactions that couldn’t be previously recorded by the blockchain.

The application of a known blockchain technology to a different business context (such as medical records or food distribution)

Why: The substance of the invention is an improvement to the technical functionality as opposed to the administrative aspects of the blockchain.

Why: The substance of the invention lies in the application of known technology (blockchain) to a different application. Using the unaltered blockchain in these contexts is a business innovation.

If you have developed a product or service that can be clearly characterised as a business innovation without any technical innovations then you may need to seek protection outside the patent system.

To better understand manner of manufacture and the substance of your innovation we encourage you to seek advice from a patent attorney. They will be able to provide specific advice on your products and services as well as your protection strategy. To get started, check out our Engaging an attorney toolkit.