Embedded software and patents

Embedded software is a program integrated into a piece of equipment, controlling its hardware operation, such as the control units of a vehicle or the firmware of a medical device, a household appliance or a connected object. Computer programs as such are excluded from patentability by Article 52 of the European Patent Convention (EPC) and Article L. 611-10 of the French Intellectual Property Code. Embedded software nevertheless lends itself particularly well to patent protection, since it most often acts on a technical process. It also benefits from software protection under copyright.

Patentability of embedded software

Under the approach of the European Patent Office (EPO), a claim directed to a programmed device has technical character and escapes the exclusion. Inventive step is then assessed by taking into account only those features that contribute to solving a technical problem. Software that controls an engine, regulates the energy consumption of an appliance, processes the signal from a sensor or strengthens the security of a system generally produces such a technical effect. Embedded software thus falls squarely within the category of computer-implemented inventions. Drafting usually combines method, device and computer program or storage medium claims, so as to reach each player in the chain.

Infringement and its particular difficulties

Where the program is supplied separately from the hardware, by download or remote update, the device claim may be realised only at the end user’s premises. The patent holder must then rely on contributory infringement, which requires the supplier to know that the means are suitable and intended for putting the invention into effect. Proof often requires access to the code or to its observable behaviour, through a saisie-contrefaçon combined with an expert examination or through analysis of the product. Finally, the location of distribution servers may complicate determining the territory of the infringement.

Interplay with other forms of protection

Source code and object code are protected by copyright, under the conditions of Directive 2009/24/EC, independently of any patent. The frequent use of open source software components requires compliance with the corresponding licences, some of which require the modified source code to be disclosed. Connectivity modules built into equipment also implement standards covered by essential patents, which raises the question of component-level licensing.

Key points

Embedded software is one of the most favourable areas for patents in the software field, provided that it produces a technical effect on the equipment it controls. Its protection must be designed around the distribution chain, from the hardware to the updates. Claim categories should be combined, the technical effect documented from the drafting stage and the licences of open source components and of standards built into the product checked.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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