WHEN patent lawyers in the US are plotting to get software patents from the USPTO they aren't doing anything unethical. While software patents have virtually no 'teeth' in US courts (and are also harder to get from the examiners, especially once PTAB gets involved), there's no law or even guidelines actually banning such patents.
Once the Examiner identified that claims are drafted in the means plus function style the CRI guidelines seeks examiner to further to look for information relating to implementation of the invention in the specification and if the specification supports implementation of the invention solely by the computer program then such means plus function claims may be deemed as only computer programme per se falling within the ambit of non-patentable subject matter under section 3(k). Moreover, though act does not refer the term software, the CRI guidelines directed to keep such software within the scope of non-patentable subject under section 3(k) as seen from the last para of this guideline for "mean plus function claims" where it is stated that "Where no structural features of those means are disclosed in the specification and specification supports implementation of the invention solely by the software then in that case means in the "means plus function" claims are nothing but software."
Added to the above dilemma is the huge challenge facing start-ups when more established players with much deeper pockets decide to get into the game of obtaining brands or filing patents to undercut a young brand. Every start-up founder working in the artificial intelligence/machine learning space will admit to spending more than her/his fair share of time worrying whether the next breakthrough the company will survive the challenge of proving they have something new over the tons of existing and filed patents in the area by big players like Google.
It is imperative that start-up lawyers develop a unique metric to decide when is the right time to file for relevant registrations, and how far they wish to go in trying to protect their IP. There are, indeed, no right answers here.
Software patents
In Europe and many other countries, mere software as such is excluded from patentability. For historical reasons, software is regarded as written source code which can only be protected by copyright.
However, many electronic products nowadays have digital functionality, and machinery is often electronically controlled. Due to increasing importance for industry, obtaining patent protection is often desirable. In Europe and around the world, it has been recognized that excluding these products or methods from protection would block innovations and be detrimental to industry.
Therefore, in many jurisdictions, it is possible to patent so-called computer-implemented inventions.
In general, a computer-implemented invention relates to a device — such as a desktop computer, a dedicated processor, or a controller — with a functionality that is implemented by a software component.
Under the present regulations, the European Patent Office (EPO) carries out a number of tests to determine whether a software-based invention merely relates to software as such or is eligible to be patented.
In addition to the regular tests for novelty and inventive step, the EPO tests whether the computer-implemented invention describes an actual implementation of a product or method, rather than just an abstract idea.
Functionality and patents
The EPO further checks whether the functionality of the software goes beyond mere automation of a known process. Obviously, software instructions have the property that a computing device that executes these instructions shows electronic activity. Mere automation of a known process which causes such electronic activity generally is not eligible to be patented.