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For Software Developers

One of my software developer clients recently sent me a promotional article written by a legal firm.  This article urged software developers to file for patent protection.  I felt the article was misleading, as it did not discuss current problems with protecting software.

If you have created a “system” which includes sensor input or other specialized hardware and a software component, you still have a reasonable chance of obtaining patent protection under patent rules regarding new, useful and non-obvious inventions.  However, if you have only created software that can run on any computer and does not form part of a “system”, your chances of obtaining patent protection are greatly diminished.  A Patent Examiner will consider that you are merely implementing an “abstract idea” with a computer.  “Abstract ideas” are considered to merely be mental exercises that could be implemented manually, the use of a computer is not considered to be an essential.

In the 2014 Alice Corporation decision in the United States, the US Supreme Court indicated that you must have more than an “abstract idea”.    The provision of algorithms has been held to be insufficient to constitute more than an “abstract idea”.  Clients of mine have conducted searches and discovered similar U.S. patents.   However, a patent granted for generally similar software in 2012, is not an indication that you could obtain a patent for the same type of software today.   Since the Alice Corporation decision, there have been hundreds of software patents invalidated.  In 80% of U.S. Court cases involving software patents since the Alice Corporation decision, the patents have been invalidated.

Software developers have not done much better in the Canadian Intellectual Property Office.  An Applicant recently appealed to the Patent Appeal Board a decision of a Canadian Patent Examiner denying the majority of claims for Canadian Patent Application 2,529,210.  The Canadian Patent Examiner had allowed claims 31, 34, and 37-44.   The Applicant did not get the desired result, as the Patent Appeal Board denied all claims as being “abstract ideas”, even those claims the Canadian Patent Examiner had previously allowed.

There is no benefit to a software developer to fully disclose his or her invention when applying for patent protection, only to have that patent application refused.  Software developers should, therefore, only apply for patent protection when their patent agent can give them reasonable assurance of success.  This would normally be in situations in which a computer or other hardware is an essential part of the invention, for example if the process implemented on a computer could not be done manually as an outcome is required in a fraction of a second.