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We are a software company based in Europe making spreadsheet software including add-ins.

In 2019, we added a feature in one of our Excel add-ins published in Microsoft Office add-in store, which has so far a certain number of users. Basically, the idea is to propose a better rewriting of a formula in terms of simplicity, robustness, etc. (see the demo). We did not file a software patent for that.

Today, we realized that there is a patent application from Microsoft whose idea is very similar to ours. But Excel has not yet such a feature.

So my questions are:

  1. If their patent gets granted worldwide, will we still have the right to sell our add-in worldwide?

  2. We plan to advance this feature, what could our company do to avoid future IP trouble with regard to their patent?

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  • What does "advance this feature" mean? Make it more widely available or improve on it?
    – George White ♦
    Oct 12, 2022 at 21:35
  • @GeorgeWhite At the moment, our add-in is downloadable worldwide. "advance this feature" means improving the feature.
    – Thomas
    Oct 12, 2022 at 22:37

1 Answer 1

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It has been issued (Jan. 2022) in the US as Suggested functions for formulas in spreadsheets US 11227106B2 but is still pending in Europe as of October 12 2022.

Regarding the rest of the world, patents are territorial. To get exclusivity in a territory the inventor must get a patent in the location. The application in question was filed using the PCT system so it potentially could end up widely patented even though it has only been pursued so far in the US and EP.

If I have calculated correctly the 30 month point from the priority date was Sept 19 2022. Most places have a cutoff from entering the national stage at that point so the application might only ever be in in the US and Europe. (Some allow 31 months and other ways to go past 30).

The EP allows for third party observations to be filed for free. Filing information about a publicly available product (before the priority date of 2019-3-19) will bring it to the examiners attention and, if you are correct, will keep it from becoming an EP patent. If that actually happens, Microsoft will be aware that the U.S. patent is weak and possibly unenforceable.

It may be that the issued claims are narrow enough to not cover your products. You can study the whole history of the US prosecution and EP prosecution starting at the Global Dossier - see link in google patents

Of course you now need professional help.

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  • Thank you for your answer. 1) Our add-in including that feature was published in the Microsoft office add-in store on the 15th July 2019, was it early enough for us to file an observation? 2) US2018005122 was active in the US from the 1st Dec 2020, is our add-in infringing their patent? 3) I don't see the relationship between US11227106B2 and US2018005122, for me these are 2 distinct applications.
    – Thomas
    Oct 12, 2022 at 23:04
  • @Thomas Please don’t ask new questions in comments. Better to post a new question.
    – Eric S ♦
    Oct 13, 2022 at 2:45
  • I understand the principles of Stack Exchange. At least the 3rd question is directly related to the answer of George; I don't see how George observed that US10853732B2 has been issued (Jan. 2022) in the US as Suggested functions for formulas in spreadsheets US11227106B2.
    – Thomas
    Oct 13, 2022 at 13:45
  • Please ask a new separate question so things do not get too convoluted.
    – George White ♦
    Oct 13, 2022 at 17:33
  • I posted a new related question: patents.stackexchange.com/questions/24989
    – Thomas
    Oct 14, 2022 at 22:13

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