Novelty and inventive step
Despite the commonly held belief among the software development community, it is possible to protect an app with a patent in Norway, as long as certain criteria are fulfilled.
The misconception that apps are unpatentable derives from the rejection of many patent applications by the Norwegian Intellectual Property Office over the years. In fact, section 1.3. of the Norwegian Patents Act states that: "Subject matter not regarded as inventions includes anything which merely consists of . . . programs for computers".
The keyword in this statement is "merely". If the "program for computers" (ie, the app) is, or affects, part of a system including non-computer program elements, it will not be rejected based on section 1.3.
How to patent apps
A useful three-step test to check that an app will not be excluded from patentability under section 1.3 is as follows (see Figure 1):
- Does the app cause a computer (eg, a laptop, smartphone or tablet) to perform a task?
- Does the task performed by the computer make a contribution to the art (ie, is it a new way of doing something or a known way of doing something new)?
- Is the contribution to the art technical in nature (eg, does it change how an object works, behaves or is controlled)?
Figure 1: app patentability flowchart
An example of a patentable app would be one that enables an authorised user to start an electric scooter. The app causes the computer to perform the tasks of identifying the user as the holder of the scooter, and registering who must pay for the service to ride the scooter a determined distance. At the time of filing, this must have been a new way of securely, accurately and easily renting a scooter, hence making a contribution to the art. The app changes how the scooter and associated payment system respond to an authorised user so the contribution is technical in nature.
The Norwegian Patent Office considers the following not to be inventions:
- mathematical methods;
- aesthetic creations;
- schemes, rules or methods for performing mental acts, playing games, doing business or presenting information.
Therefore, the following computer programs would not be protectable by a patent:
- a smartphone app that is essentially just a game;
- software that simulates accounting;
- software that performs an otherwise known mathematical procedure; or
- an app that simply presents data without the data being used for something.
As well as being outside of the excluded subject matter, to attract patent protection, an invention must be new and involve an inventive step – that is, it must not be an obvious modification to previous technology.
Step two of the three-step test accounts for the requirement of the invention to be new since it demands that the app causes a new way of doing something or doing something in a new way.
The app will involve an inventive step if the technical contribution to the art is not obvious – that is, the inventor has imparted a creative input to the way an object works, behaves or is controlled.
In the aforementioned scooter app example, in order to obtain a patent, the new way that the scooter and payment system respond to an authorised user must have been non-obvious when compared with known technology. It would not be enough that the code of the software is new and non-obvious.
While the threshold above exclusion under section 1 of the Patents Act may be low, the threshold for achieving inventiveness for a software patent may be regarded as significantly higher.
In summary, it is a misconception that software – and thus apps – cannot be patented. If an app has a technical effect on a real-world problem or object, it is not excluded from patent protection. The challenge with patenting an app is that the technical effect of the app must be sufficiently new and inventive in relation to what already exists.
For further information on this topic please contact Laura Mannering at Bryn Aarflot by telephone (+47 46 90 30 00) or email ([email protected]). The Bryn Aarflot website can be accessed at baa.no.