Protection of Software and Software-Based Inventions
Software is patentable, but differently.
Successful Patenting of Software-Based Inventions
Due to their intangible nature, software and software-based inventions must comply to certain characteristics in order to be patentable. Therefore, it is very often not the subject matter of a software-based invention that is decisive for its patentability. Rather, it is important to work out the effects relevant for patentability in a suitable manner, for example:
Germany and Europe: Technical character
In Germany and Europe, a "technical character" is required. In Germany, this means contributing to the solution of a technical problem by technical means. In Europe, it means a technical effect that goes beyond the normal physical interaction with the hardware.
USA: Exclusion of basic building blocks of human ingenuity
In the USA, software-based inventions are required to go beyond "basic building blocks of human ingenuity". These building blocks include laws of nature, natural phenomena, and abstract ideas such as mathematical theories, basic business processes, organisational forms, insights or knowledge.
Enforceability of Patent Protection
Nowadays, almost every technical system, facility and product is online. Constantly increasing transmission rates, shorter response times and more extensive network coverage, together with the intangible nature of software, mean that patent protection can be circumvented, or at least its enforcement can be made considerably more difficult.
Cloud-based Execution
For example, software-based processes can be executed on a server or in the Cloud in a non-extension state. Patent protection would not exist in this case. Therefore, claims should be formulated in a platform-independent and/or location-independent manner, for example that the execution of a process is "caused" or "brought about".
Distributed Execution
Even within extension states, distributed execution can make enforceability difficult. The patent proprietor would be limited to prosecution for contributory infringement. Therefore, protection should also be claimed for individual parts of a process. In particular, parts which are suitable as separate modules due to their input and output behaviour may be considered here. If in such a case an inventive step cannot be demonstrated, one should at least resort to formulations that the execution of the partial process is "caused" or "brought about".
Software Download
Software may be made available for download on a server in a non-extension state. In this case, only its users could be prosecuted. Since these are usually (potential) customers of the patent proprietor, this option is very unattractive. To avoid this, protection should always also be claimed for a computer program product.
Continuation of Patent Protection
In order to obtain patent protection, especially within the desired scope, and to ensure its continuation, careful drafting is of particular importance, e.g.:
Functionally Descriptive Terms
In the classical engineering sciences, technical terms are usually well defined. In computer science, however, rather self-explanatory or functionally descriptive terms are often used. These are intuitively understandable, but hardly restrictive. Therefore, special care should be taken to specify their exact meaning.
Level of abstraction
Features of software-based inventions often refer to certain levels of abstraction, for example, in the field of network and communication technology to specific layers of the OSI-7 layer model. This often happens only implicitly. Accordingly, it is important to clarify the reference layer of the features and their interactions with other layers.
Embodiments
Against this background, description of embodiments are of particular importance. In case of doubt, a larger number of embodiments should be provided in order to obtain patent protection within the desired scope and to ensure its continuation.