Software is a relative new-comer to the patent arena. Over the last few decades, government patent offices have struggled to decide how to deal with software patents. There is a widely-held view that software simply can't be patented, particularly in Europe. Fortunately, this is not at all correct: the right type of software innovation can most certainly be patented in all the world's major patent offices.
Dehns Partner, Tim Wilson, recently hosted a seminar on this topic and provided strategies for maximising the prospects of getting a software patent successfully granted. Below is a summary of key points from the seminar, as well as examples of a few questions that came up.
Tim Wilson explained.......
- the importance of considering intellectual property (IP) protection at an early stage to ensure you benefit from the competitive advantage it can provide
- the value of IP protection in underpinning licensing and funding deals
- the value of IP protection in deterring competitors and accessing government tax breaks
- that you should not believe the commonly stated view that software simply can't be patented... in many cases it can!
- that software which solves a "technical" or engineering problem can often be patented (whereas purely business innovations are harder to protect)
- the importance of not disclosing inventions publicly before investigating whether to patent them
- the benefits of consulting IP advisors, such as a patent or trade-mark attorney, at an early stage
- that the costs of obtaining patent protection are not as higher as you might fear, and can be spread over many years.
Q. How can I benefit from tax incentives?
A. The UK government "Patent Box" allows innovative companies to benefit from a reduced rate of corporation tax. You need a granted UK patent to be eligible. However, these can be obtained quite quickly and cost-effectively in the right circumstances. We would be happy to provide more information.
Q. Can I protect an algorithm?
A. Yes! When we talk of "software patents" we don't just mean source code listings. Instead, a patent protects the idea behind a clever bit of software. The invention will be expressed by a set of essential operations that together captures the essence of the invention. This may often look very much like a stripped-down version of an algorithm, but set out in words rather than code.
Q. How much does a patent cost?
A. To write and submit an initial patent application in the UK typically costs around £3,000 - £6,000. This is mostly in professional time, talking with the inventors to understand the invention fully, and writing the necessary legal documents defining the invention. Further costs are incurred a year or so later, but the level of these very much depends on your aims—e.g., whether you desire international protection or just a UK patent.
Q: I've already disclosed my invention. Am I too late to obtain a patent?
A: Unfortunately, once you've disclosed your invention by putting it into the public domain (for example by publishing the work, talking about it at seminar, etc.), most countries will no longer let you patent it. Far too often we see great inventions that are disclosed too early so can no longer be protected, leading to a reduction in potential commercial benefit. A few countries, including the United States, provide a short "grace period" which may be useful in such circumstances—we would be happy to advise more on this. However, wherever possible, it is always best to speak to a patent attorney before you tell anyone outside your company about an invention.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.