While I wouldn’t hold myself out as a patent expert, most tech lawyers need to have some basic patent knowledge in their armory. Patent law really is a highly specialised field that requires consulting a practising patent attorney with real technical qualifications and plenty of patent filing and prosecution experience.
Although software intellectual property can be adequately protected under traditional copyright law, many new startups, developers and even corporations seriously investigate protecting their software IP via patent registration either for defensive or offensive commercial reasons. Although patent filing costs can be significant, they can be a useful negotiating tool with both investors and competitors. There is, of course, a long running public policy debate about the merits of software patents and the balance between ensuring innovation vs protecting commercial competitive advantage.
There are some basic practical considerations with patents:
- Cost: Patents involve application and if successful recurring registration costs for the term if the patent. Patents are also territorial, so costs can be multiples, although multinational applications via Patent Co-operation Treaty (PCT) applications are available. Naturally, the costs and time involved is significantly more expensive and longer process than automatically available under copyright in most all Asian jurisdictions.
- Eligibility: In every jurisdiction the threshold patentability requirements for software (if patentable) requires some form of new innovation or inventive step. A good patent attorney will test your software processes and workflow to test this issue.
Its worth noting some interesting developments in mainly in the ANZ region in the software patent space:
Australia
Australia has recognized software patents since the early 1990s. The landmark case is IBM’s Curve generation case. From time to time there is still academic debate about the merits of patentability subject matter in software and the need for legislative review of the requisite lower threshold tests for granting of use of the shorter term innovation patents for software.
Looking at recent Australian software patent cases, the Australia courts seem to taking a much more exacting view on establishing patentability criteria to ensure that patent applications do not overreach. The recent April 2013 commencement of the Raising the Bar Act which is a major reform of Australia’s patent laws also now widens the prior art test outside of Australian boundaries. So the innovation test will be applied globally.
New Zealand
After a long public consultation period, the NZ Government clarified earlier in May that under the proposed bill that will refresh NZ patent laws: “A computer program is not an invention and not a manner of manufacture for the purposes of this Act.” The government has released a supplemental paper that seems to suggest alignment with the UK approach to software patentability. Software that is an integral component of an innovative NZ hardware should still be able to be patented (e.g. voice activated Fisher & Paykell washing machine). Small NZ software developers and startups though can raise a glass and use their bootstrap funding for actual code development…
Meanwhile, most patent lawyers have been paying close attention to the US Federal Circuit appeals court involving 2 Australian parties that may potentially provide US direction on the patentability of software generally: CLS Bank International v Alice Corporation, U.S. Court of Appeals for the Federal Circuit, No. 2011-1301
