Patent: Protecting computer software

We are often asked whether and how a computer software patent can be obtained. This is certainly one of the most complex issues in patent law at present. The challenge is to distinguish between non-patentable programs 'as such' and patentable technical solutions implemented by software. In this article, you will find out what requirements must be met in order to successfully apply for a patent for computer software and what advantages a software patent offers.

Do you need support? WSL Patent has been successfully helping established companies and start-ups to protect their intellectual property for 70+ years. As patent attorneys and attorneys-at-law, we have the necessary industry expertise and can advise you on all IP matters. Feel free to contact us for a non-binding initial consultation in the office or by video call.

Patent: Is computer software patentable?

In Germany and the European Union, the Patent Act (PatG) and the European Patent Convention (EPC) regulate the requirements for the patentability of inventions. According to Article 52 EPC, programs for data processing systems as such are excluded from patentability.

However, this does not mean that software is generally not patentable. The decisive factor in assessing patentability is whether the software program comprises a technical character that goes beyond mere data processing.

A patent is usually granted if the following requirements are met:

  1. Novelty: The invention must not be part of the prior art.
  2. Inventive step: The invention must not be obvious to a person skilled in the art from the prior art.
  3. Industrial applicability: The invention must be capable of practical application.

In the case of a software patent, the invention must additionally comprise a technical character that goes beyond the mere processing of data, e.g. by achieving further physical effects. In other words, apart from the fact that a method is computer-implemented, a corresponding computer program that specifies this method must achieve a further technical effect when it runs on a computer.

Good to know: Software inventions are often referred to in technical jargon as 'computer-implemented inventions'. This term covers claims comprising computers, computer networks or other programmable devices, wherein at least one feature is implemented by a program.

What does 'technical character' mean for software?

Software is considered a technical invention if it solves a technical problem by technical means. Over the years, the European Patent Organisation (EPO) has developed precedents and case groups to define the concept of technical character.

Examples of patentable software include

  • Control software for machines or technical devices,
  • Algorithms for improving processor load balancing or memory allocation,
  • Programs that fulfil security-relevant functions, such as encryption methods.

Pure business methods or programs that merely perform mathematical calculations do not usually fulfil the requirements for technical character.

Requirements for a patent for computer software

The 'further' technical effect is a specific criterion used to examine whether the software, when carried out on a computer, has a technical effect which goes beyond 'normal' physical interaction between the programme (software) and the computer (hardware) (as in EPO T 1173/97). The 'further' technical effect is thus an essential part of proving patentability of a software patent.

A corresponding technical effect exists in particular if the software

  • solves a technical problem (e.g. improvement of the data transfer rate),
  • causes concrete physical effects (e.g. controller of a machine),
  • technically improves the efficiency of a computer system (e.g. through memory optimisation).

Important: The technical effect must go beyond what is usually achieved by the functioning of a computer. The mere implementation of an algorithm on a computer is not sufficient.

Such an effect exists, for example, if the software controls physical devices (T 0208/84), or in the case of a method for restoring distorted digital images. The EPO also clarified that any interaction with the physical world, such as the processing of sensor data, can contribute to the technical character (T 0643/00).

The decisive question is always whether the software goes beyond a pure data processing function and makes a contribution to solving a specific technical problem. Proving this 'further' technical effect is therefore a key argument that must be addressed when drafting the patent application.

What are the advantages of a software patent?

A software patent gives the owner extensive rights. It makes it possible to exclude third parties from using the protected technology, thereby creating a competitive advantage. In addition, a patent can make it easier to monetise the software, for example through licences or sales. Especially in innovation-driven industries such as IT, medical technology or the automotive industry, patent protection is an important means of securing intellectual property.

Do I have to hand over the source code when patenting?

Many inventors fear a disclosure of the source code as an important trade secret when applying for a patent. When applying for a software patent, however, you do not have to disclose the source code.

Instead, it is only necessary to describe the invention in the patent application so clearly and completely that a person skilled in the art can easily rework it. This is usually done by providing a general technical description of the mode of operation, the technical effect and the underlying idea, but not by disclosing the exact programme code. This protects the source code as a trade secret.

Registering a software patent: What you need to bear in mind

However, applying for a patent for software also harbours challenges. In particular, the presentation of the technical character requires detailed and precise wording in the patent application. Errors in the description or a lack of technical justification can lead to the application being rejected. Professional support from a specialised patent attorney is therefore essential.

Typical stumbling blocks in the application are

  • Unclear wording in the patent specification,
  • Lack of evidence and arguments in favour of the technical character,
  • Overly specific and therefore narrow formulation of the claims.

We will be happy to provide you with comprehensive advice on your options and the essential elements of your patent application.

Alternatives to a patent for computer software

In addition to patenting, there are other ways to protect software. These include, in particular, copyright and the protection of trade secrets.

  • Copyright: As already mentioned, copyright protects the source code of software. It is established automatically when the programme is created and does not require registration. As it is only limited to the specific code, the scope of protection is correspondingly limited and copyright offers no protection for the underlying ideas or functionalities.
  • Trade secrets: Through non-disclosure agreements and technical measures to protect trade secrets, companies can prevent third parties from gaining access to sensitive software solutions.

While copyright arises automatically when a program code is created, it only protects the specific form of the code, but not the underlying idea or function. A patent, on the other hand, offers protection for the technical functionality and application of the idea and creates exclusive rights of use. In some cases, a combination of several protection mechanisms makes sense in order to comprehensively protect the software.

Successful patent application for software companies

The following steps are recommended for a successful application for a software patent:

  1. Technical analysis of the software: Firstly, check whether the software solves a technical problem and what specific technical contribution it makes.
  2. Patent search: Make sure that your invention is new and stands out from existing technologies. This will not only prevent your patent application from failing, but also avoid legal consequences from competitors.
  3. Drafting the patent specification: Have the patent specification drafted by an experienced patent attorney to set out the technical aspects clearly and comprehensibly.
  4. Collaboration with experts: Consult your experts in the field of software development to draft the technical description in the best possible way. Especially in the field of software patenting, the co-operation between patent attorneys and developers should be particularly close.
  5. International strategy: In addition to a national application, consider filing an international patent application to protect your rights globally. Software in particular can be quickly applied and scaled internationally. We would be happy to advise you on your options.

Conclusion

Patenting computer software offers companies the opportunity to effectively protect innovative technologies and strengthen their market position. At the same time, it requires in-depth knowledge of patent law and careful preparation. The legal expertise of a patent attorney is indispensable in order to meet the complex requirements and avoid mistakes. With a clear strategy and a convincing technical presentation, the chances of a successful patent grant increase considerably.

As a law firm specialising in patent and trademark law, we have the expertise and the right tools to support you with your searches and patents. Thanks to our decades of experience, we can also provide you with comprehensive advice on the possible options and give you an assessment of the market and legal situation and the costs involved. In addition, we are happy to take over the entire patent application process for you. Please feel free to arrange an appointment with us.

Back to overview