Robert Lind on why you might have something worth patenting

National newspapers have this week been commenting on figures published by the World Intellectual Property Office (WIPO), which shows the number of UK-originating patent applications for computer-related technologies is at its lowest level in 10 years.

The situation is brought into further contrast when we see that, over the same period, global patent applications for computer-related technologies are at an all-time high. Although UK businesses file fewer patents on average than their European and American counterparts across most technology areas, the numbers for computer-related inventions in the UK are particularly low.

Perhaps this is due to a failure by UK businesses to recognise that they have developed software functionality that is novel and patentable.

You don’t have to be an Apple or a Samsung to get a software patent.

You don’t have to be a software company at all.

Here in Oxford, we come across biotech and pharma companies, medical devices manufacturers, engineering firms, even travel companies, all of whom have created their own software so that their people can do their jobs efficiently or so that their products can carry out the functions they are designed for.

This innovative software functionality often goes unnoticed and is allowed to leak into the public domain where it may be freely used by competitors.

As a result, companies may be exposing themselves to tougher competition, lost licensing income, and the loss of tax relief available under the Government’s new Patent Box scheme.

The first step to establishing whether you have the potential for a patent application in your software is to sit down and think about what functionality is clever and innovative, and what functionality you would not want your competitors to copy.

This may lie in a product’s user interface, a website portal, or a back-end solution.

A common mistake, particularly with computer-related inventions, is to consider patenting a feature only after it has been released in a product or service and the success of the feature becomes apparent.

If you want to obtain strong patent protection, ensure you have confidentiality and IP agreements in place with any third parties, before any necessary disclosure. Still better, consider the possibility of patent protection before making any disclosure, confidential or non-confidential.

Robert Lind is a partner at the Oxford patent and trademark attorney firm Marks & Clerk.