UK: Protecting Innovative Software and Business Methods Collaboration is Key

Last Updated: 19 December 2003
Article by Karl Barnfather

Sometimes with a relatively intangible and complex product, such as innovative software or a new business method, it is difficult to identify precisely the inventive elements which require protection. This is where collaboration between the Patent Attorney and Inventors is particularly key.

In this discussion, we adopt the pragmatic assumption that very many software and business method developments are patentable. This holds not least before the United States Patent and Trademark Office following the State Street Bank decision, which sets out that an invention needs to provide a useful, concrete and tangible result. This has been described by some US Attorneys as simply requiring that the invention provides "a competitive advantage". Moreover, grant of such patents in other jurisdictions and in particular, the European Patent Office often goes unheeded sitting as it tends to do in the shadow of the misconception that software inventions are not patentable. The following discussion is an illustration of how collaboration between the patent attorney and inventor can be used to best effect in order to draw out the technical contribution of a software or business innovation with a view to not only meeting the requirements under US law but also those prevailing at the European Patent Office.

Give us the Overview

In order successfully to draft a patent specification to software or business related inventions, it is particularly critical to get a good understanding of the overall system provided by the invention and to step back having assimilated this information, critically to determine the specific areas and aspects of the overall system, which should be protected.

To assist us in achieving this goal and to cast the description of the invention, which of course forms the core of any patent specification, in sufficiently technical detail, it is particularly helpful to receive as much of the following information from the Inventors as possible.

Drilling Down Deeper

In order for a business method to be patentable in Europe, tangible elements used in the process need to be identified and of course, very often these elements can be described in terms of components of a computer system configured to perform the business method, as is the case for any software innovation. Accordingly, we first need to be informed about such a system and its components. Diagrams of each element are particularly helpful in this regard.

As well as considering the overall benefits and hence functionality of a computer system used to implement an invention, it is necessary to consider the detailed processes which are performed between the different elements of the system.

So far then it seems fairly straightforward that we need to know what it is and how it works. However, having addressed these broad questions, and identifying certain improvements which the invention provides over known systems, it is imperative that the collaborative process between Patent Attorney and Inventor drills down to reveal the relevant inner workings of the system, which need to be highlighted.

Of particular relevance in this regard is data manipulation which occurs within the system. What is the original format of any data, how is it transposed within the system and what does it look like at the far end of the operation? Software and business method inventions can often relate simply to improvements in speed of data manipulation and/or the flexibility of data output to a user. Accordingly, it is important firstly to understand and secondly accurately to describe what it is about the innovative system which enables such efficient processing or flexible date processing to occur.

Of course, these are only two examples, which whilst quite common in the software sector, are by no means exhaustive. Often the relevant issues which need to be discussed in greater detail stem from answering questions along the lines of "What is the point of this feature"? and "What is the benefit of doing it this way"?

Patching It All Together

Accordingly, all of the following areas need to be addressed with a view to optimising patent protection for novel software and business related inventions.

Overview - what is the purpose of the innovation and how good is it at interacting with known systems, computers and/or users.

Physical Components - what types of processors or computer hardware are required to implement the invention. For example, is a network of computers involved?

Data Manipulation - what is the nature of the data which is input into the system and/or what interaction is required by a user in order to drive data manipulation and/or control systems within the system.

User Environment - how does the user interact with the system in terms of inputting data, manipulating data, and/or reviewing the results of the data manipulation.

Data Structure and Program Arrangement - data storage can, of course, be critical in many software applications and accordingly, the nature of that storage needs to be described in many instances. The sequence in which different elements of data are addressed can equally be pivotal and hence, both structural and functional detail related to the data structure and the program operability with the data is often extremely important.

Clearly it can be extremely advantageous to provide detailed graphical representations of a computer system or new software product. It is advantageous to have flow diagrams representing the basic algorithms and block diagrams of the apparatus. However, it is equally important to have graphical representations of data structures, signal wave forms and the graphical user interface for the primary as well as different embodiments of the invention. Graphical representations of data paths, flow control and program structures are equally key.

It should also be borne in mind when seeking to protect highly technical subject matter in the US that use of simplistic drawings, providing an overview of the system, are particularly advantageous. Such relatively non-technical representations of an invention can be pivotal in explaining the invention to a jury during US patent litigation.

It is also very useful to raise with us problems which the programmer has addressed in developing the software or new business method in order for us to understand where particularly important features of the invention lie and which therefore merit patent protection.

It should be noted that in preparing a patent specification the description needs to be in the English language and should only contain small extracts of source code to assist in the technical explanation.

An Inventor can derive considerable benefit from looking in detail at patent specifications which have been published for inventions in related fields. If drafted well, such published patent specifications should indicate what it is that we, the patent attorneys, will seek to achieve in terms of describing and defining the invention at hand. Many patent search engines are publicly available through the internet and include, for example, that provided by the UK Patent Office at www.patent.gov.uk.

Let’s get Technical

It should be apparent from the preceding discussion, therefore, that an invention should be embodied in a technical system for the purposes of a patent specification and also that as much technical detail of the relevant features of that system should be described. The technical advantages provided by the invention are preferably also clarified not least to smooth the prosecution of the application through the examination stage as well as to provide basis for an appropriate technical definition of the invention, which definition will form the basis of the claim defining the scope of protection of the eventual patent.

The technical advantages will need to be more than mere automation of a process and accordingly improvements in effectiveness, efficiency, speed or usability, for example through the use of an improved user interface, should be detailed.

So what’s the Invention?

Having addressed issues related to adequately describing the invention for the purposes of meeting the requirements of an enabling disclosure, it is equally imperative that good consideration is given to define aspects of the system which should be protected, that is properly to "claim" the invention.

A patent claim to protect a newly configured world-wide web having manifold web-clients and a new web server will self-evidently prove tremendously difficult to enforce against any one alleged infringer, even the provider of a web server encompassing the core of the invention but nevertheless only forming part of the actual claimed invention. While an allegation of infringement is often possible against such a web server provider on the basis of "contributory infringement", it is far better that the patent application is drafted with all such possible acts of infringement in mind at the outset, such that a claim is directed to computer products (e.g., a CD with the program on), the individual computer system and possibly also to a newly configured network of computers, such as through the world wide web or an intranet.

Similar considerations are important in relation to the type of signal which is transferred between systems and the interface presented by a computer system to a user, which interface itself can often provide great improvements in the operability of a system, in the same manner as traditional mechanical interfaces such as improvements in steering wheels or control pedals for a vehicle have traditionally been patentable in relation to vehicles.

Now, where should that have got us?

The above discussion being by its very nature somewhat generalist will nevertheless hopefully serve to assist inventors in firstly recognising that their latest software development or business innovation is at least worthy of consideration for patent protection. This is critically important in the circumstances of the prevailing misconception in Europe, as discussed elsewhere in this IP review, that due to ambiguities in legislation, software innovation is not patentable. This is a misconception which must once be dispelled if European businesses are to stand shoulder to shoulder with software developers throughout the rest of the world. Foreign software developers have for many years now, probably through ignorance of any differences between US Patent and European Patent Office standards for patentability, secured patent rights in Europe.

This article aims to enable the reader to prepare a suitable invention disclosure which will assist us in accurately determining the nature of the invention or, more likely than not inventions in software or business development. After all, this has the primary benefit of reducing the requirement of our trawling through reams of source code, and thereby keeping down the bill!

Copyright Withers & Rogers 2003

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.

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