Breaking down silos and focusing on real-world uses help businesses to better identify software inventiveness and communicate findings to patent offices, according to in-house counsel.
Sources at tech-focused companies say they can give themselves the best chance of getting protection for a computer-implemented invention – by meeting novelty and inventive-step requirements – if they can more easily learn from inventors about why the idea is new and useful.
They point out that patent offices are often concerned with the real-world applications of software inventions, and that companies can flesh out what those are by implementing the right mechanisms, processes and checkpoints in employee workflow.
“We have mechanisms and checkpoints to work out if something technical is going on,” says the head of IP at a bank. “Those processes are good for us because, culturally speaking, we are a bank with software engineers in it and not a software company with financial experts.”
He adds that these processes enable patent attorneys to really understand what the bank is doing from a tech perspective.
Cassandra Derham, head of technical IP at travel tech company Amadeus in France, points out that there are many ways to communicate how a computer-implemented invention works. She says that taking a journey with developers is therefore important to understand how a system has changed and what that means for the outcome.
It can be difficult to get into what an algorithm does because “engineers sometimes think we are interested in the actual code,” she says.
“Once we have got to know the engineers and their tech, we can ask more pertinent questions about why it is important.”
Once the businesses has that information and has gone through the process of analysing it, it can go to the patent office better armed with a story that should convince the organisation of the invention’s patent worthiness.
Such processes significantly increase the likelihood of getting a patent in an increasingly uncertain IP landscape, according to in-house sources.
They explain that discerning computer-implemented inventiveness and explaining it to patent offices has long been a challenge for businesses because of how software can be presented in various levels of specificity.
The bank’s head of IP points out that an attorney or engineer could describe a software invention with box diagrams to show that the invention is essentially a process or workflow of data, or ones and noughts, or through much more detail in data packets.
“But it can be the same invention because of the way computers work – and that fact has always made it difficult for examiners to analyse inventions against prior art,” he says.
Anita Shaw, patent attorney at IBM in the UK, adds that it is often difficult for businesses and patent offices to find prior art because it can be held in non-traditional forms such as textbooks and open-source platforms.
Chris Storm, legal director of emerging technologies at Uber, pointed out at the Managing IP International Patent Forum in March that there is little value in conducting freedom-to-operate searches on software patents anymore because of the illusiveness and difficulty in analysing software prior art. “If people are not using the register to see what is out there, that is quite a large failing,” says the bank’s head of IP. “I would like to see some better initiatives to tackle that problem.”
Real-world talks
Sources say that the first step to maximising the likelihood of getting software patents granted is to put the right silo-breaking processes in place.
Shaw at IBM says her firm encourages its global IP law departments to develop close links with its tech community and to counsel them on the importance of thinking about patenting in their day-to-day work.
“A huge bonus of this initiative is that in-house attorneys are able to leverage these relationships to learn the tech and understand the commercial challenges directly from our clients, who are often seen as one of the leaders in this sphere,” she says.
Derham at Amadeus agrees that cultivating close relationships between attorneys and inventors is important. She says that her company achieves this goal by asking engineers to come up with a template for their ideas to explain why they are state of the art, and how it is new and different and adds value to the business.
“We ask them to describe the invention with a use, and at that point, they talk us through the whole system from start to finish,” she says. “Asking for an illustration of the invention and a use case takes it out of the abstract and into the concrete.”
She adds that once the company has the disclosure form – presented in PowerPoint so that engineers know that they might have to present it at some point – the patent department discusses the invention and allocates it to an attorney who is responsible for the related tech.
“We then present the idea to an IP board made up of tech and commerce experts who have become familiar with patenting and know when it is valuable to get protection and whether a patent would be possible.”
Businesses must also ensure that similarly close relationships are cultivated between inventors and external counsel. The vice president of IP at a tech company says it is important to make sure that external lawyers doing drafting understand the tech to the best of their ability, and that they speak with inventors to achieve that understanding. “Software can be difficult to protect, but so long as you have the right attorneys doing the right work, you should not have as many issues as some people do.”
IP storytelling
The next step is using the information gained from engineers to develop a story of real-world use, according to sources.
Derham at Amadeus says that her company first considers which part of its complex system is affected by the new algorithm. “Perhaps it is related to the system’s ability to predict price changes in flights. And perhaps we have a developer who has written an algorithm that will feed in historical information about price changes and events that might explain spikes in the price and that produces a trend,” she says.
She adds that the invention might include another algorithm that works out what the price might be before they put this information into the pricing server and, based on the current price for that origin and date, compares whether the price went down or up in the past with similar events.
That functionality is then built into a website interface.
“We think where the novelty lies in each step and whether there is something new happening and try and focus on that and try and end the claim with a new output. And we try and show that real-world final line effect, such as a pop-up that appears and communicates the information to our client,” says Derham.
The tech VP of IP points out that it is important to try to tell the right story to the right patent office, because each will have its own criteria for inventiveness and eligibility.
“In an ideal scenario we would work closely with counsel in every jurisdiction and tailor our claims accordingly – but that would be quite a costly exercise. It is important to understand what your key jurisdictions are and make an effort to tweak software applications for those.”
Software patents are notoriously difficult to get. But with better communication between attorneys, engineers and examiners, tech-focused businesses stand a better chance of getting protection for their computer-implemented innovations.
