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Sector » Computing and software 

Computing and software 

The software industry presents additional challenges for obtaining patent protection. On top of the usual requirements for novelty and non-obviousness, software is also subject to specific exclusions from patent protection if it implements a business method, administration process, simulation or other use deemed to be non-technical. Software focused on buying stocks, or modelling risk, wouldn’t be considered technical. Conversely computer-implemented inventions that have an external effect on equipment (e.g. engine management systems), improve the operation of a computer (e.g. speed up calculations) or store or process data more efficiently or securely can be protected. Therefore, patent applications for computer-implemented inventions need to be prepared with particular care.

To add another layer of complexity, different intellectual property offices across the world enforce different legislation and rules regarding software inventions. The US, European and UK intellectual property offices all vary in their approach to exclusions for business methods. Careful drafting in consultation with the inventor, and experience with handling excluded subject-matter objections are vital to ensure success.

Every now and then, something wholly different, such as blockchain, AI, or distributed networks enters the market, and patent law often struggles to keep up with the pace of change. Patent attorneys and their clients must keep up to date with these developments. 

The computing and software team 

Software is essential to modern business across all industries. Accordingly, our substantial computing and software team supports a huge variety of clients in differing industries, including insurance, banking, health, and telecommunications. 

We offer a hands-on approach to drafting patent specifications for clients across various industries. We prepare patent applications that demonstrate the technical effect of our clients’ products, to maximise their prospects for grant. To do so, we draw from our expert understanding and experience within software and computing industries, with our team having real-world experience as software engineers or consultants, prior to entering the patent world. 

We frequently represent clients on international matters, navigating cases before the UK, European and other international intellectual property offices. 

“I love the technical and legal challenges of obtaining patent protection for computer implemented inventions. It can be possible to obtain valid patents around the world for this type of technology, but it requires careful analysis and up-to-date knowledge.”

Dr Howard Sands
PARTNER
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Case study: Audiomob

Audiomob is a global audio advertising company originally established in the UK, which produces software to enable ads to play within mobile games without interrupting game play.

Our team has prepared, prosecuted and obtained granted patents for Audiomob’s software and is developing and managing a rapidly growing portfolio across 26 countries.

The award-winning founders and inventors of AudioMob, Christian Facey and Wilfrid Obeng, have grown Audiomob from a start-up to a company with a valuation of over $100 million and place a high value on its patents and collaboration with Boult.

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The software industry presents additional challenges for obtaining patent protection. On top of the usual requirements for novelty and non-obviousness, software is also subject to specific exclusions from patent protection if it implements a business method, administration process, simulation or other use deemed to be non-technical. Software focused on buying stocks, or modelling risk, wouldn’t be considered technical. Conversely computer-implemented inventions that have an external effect on equipment (e.g. engine management systems), improve the operation of a computer (e.g. speed up calculations) or store or process data more efficiently or securely can be protected. Therefore, patent applications for computer-implemented inventions need to be prepared with particular care.

To add another layer of complexity, different intellectual property offices across the world enforce different legislation and rules regarding software inventions. The US, European and UK intellectual property offices all vary in their approach to exclusions for business methods. Careful drafting in consultation with the inventor, and experience with handling excluded subject-matter objections are vital to ensure success.

Every now and then, something wholly different, such as blockchain, AI, or distributed networks enters the market, and patent law often struggles to keep up with the pace of change. Patent attorneys and their clients must keep up to date with these developments. 

The computing and software team 

Software is essential to modern business across all industries. Accordingly, our substantial computing and software team supports a huge variety of clients in differing industries, including insurance, banking, health, and telecommunications. 

We offer a hands-on approach to drafting patent specifications for clients across various industries. We prepare patent applications that demonstrate the technical effect of our clients’ products, to maximise their prospects for grant. To do so, we draw from our expert understanding and experience within software and computing industries, with our team having real-world experience as software engineers or consultants, prior to entering the patent world. 

We frequently represent clients on international matters, navigating cases before the UK, European and other international intellectual property offices. 

What sets us apart

We are collegiate in the way we work, disseminating ideas and information across the entire team. This is particularly important in the software space given its inherent complexity and fast-moving regulatory nature. Recent decisions and cases are always discussed as a team, as are hearings and procedures that might affect ongoing patent drafting or prosecution. This enables us to stay at the leading edge of what is important within the ever-changing regulatory space, allowing us and our clients to stay ahead of the curve. We also employ excellent invention mining processes to capture our clients’ inventions. We also undertake industry research to remain up-to-date with legislative changes and technical developments. 

Recent highlights

  • Advising an international management consultancy on obtaining patents for cloud computing infrastructure technology.
  • Advising a large telecommunications company on drafting blockchain patent specifications.
  • Advising a university spin-out company on building its artificial intelligence patent portfolio, ultimately leading to a successful acquisition of the company.

Computing and software team

Partners

Dr Simon Binnie
Partner Reading
Henning Erb
Partner Frankfurt
Paul Hicks
Partner Cambridge
Dr Simon Kahn
Partner London
Dr Jonathan Palmer
Partner Reading
Dr Jo Pelly
Partner Reading
Jason Pelly
Partner Reading
Daryl Penny
Partner Reading
Tony Pluckrose
Senior Partner London
Jonathan Pratt
Partner London
Dr Howard Sands
Partner London
Dr James Short
Partner London
Matthew Spencer
Partner Cambridge
Dr Nigel Tucker
Partner Reading
Dr Nick Widdowson
Partner Cambridge

Senior associates

Dr Adam Capewell
Senior Associate Reading
Ross Chapman
Senior Associate Reading
Malcolm Elkin
Senior Associate Reading
Joshua McFarlane
Senior Associate London
Dr Victoria Russell
Senior Associate London
Dr Robert Waddingham
Senior Associate Cambridge

Attorneys

Lizzie Alexander
Patent Attorney Reading
Dr Lucy Cunningham
Patent Attorney Cambridge
Jay Janusz
Patent Attorney London
Michael Kahan
Patent Attorney London
Charlotte Hrecinuc
Patent Attorney Reading
David Smitten
European Patent Attorney Reading
Dr. Sebastian Stephan
Patentanwalt Frankfurt
Jade Watt
Patent Attorney Reading

Assistants and trainees

Dr Jonathan Chetwynd-Diggle
Patent Trainee London
Dr Keaghan Krog
Patent Assistant Reading
Prakriti Singh
Patent Assistant Reading
Dr Jonny Taylor
Patent Assistant London