As a patent attorney who protects cutting edge technology before they reach the marketplace, I see software everywhere and it has become part of our everyday lives. The innovative technology has made it possible to do everyday tasks faster and more efficiently. Software is a key aspect of all these conveniences that are often overlooked.
Software is what we associate with modern technology. It is what distinguishes between the digital age of today and the analog days. But what exactly is software and how do you protect your software innovations that may be the basis of the next Unicorn? The patent protection you can get for your software invention depends on the type of software you are creating. It’s important to understand that the phrase “software patents” does not refer exclusively to computer programs. In fact, many types of software qualify for patent protection in their own right. We will discuss the protection for software next.
table of contents
- What is a software patent?
- What are some examples of software patents?
- How can I tell if my software is eligible for patent protection?
- What are the steps to filing a software patent?
- Can I discuss my invention with others before filing a nonprovisional patent application?
- Do I need to hire a patent attorney to file my provisional or nonprovisional application?
- What if there’s no time to file a provisional application today?
- When should I file a PCT application?
- Are there any drawbacks to filing a PCT application?
- Software patents can be complicated, but they’re an important part of protecting your innovations
What is a software patent?
Software patents are a type of patent, but they’re different from the other types of patents that exist. There are many differences between software patents and other types of intellectual property protection.
The following is a list of what you need to know about software patents:
● Software patents are different than copyrights.
● Software copyright protects the source code or blueprints used in creating a software application; it does not protect another independent implementation of the idea.
● In contrast, software patent law protects the idea behind an invention regardless of how it’s been implemented in practice or even if it has been implemented at all!
The patent application has to conform to certain disclosure requirements before it is eligible for protection under USPTO rules.
History of Software Patenting
The history of software patenting in the United States is a complex one, with a number of court cases and legal precedents shaping the current state of patent law.
In the early days of computing, software was not considered to be patentable subject matter. The U.S. Patent and Trademark Office (USPTO) generally rejected software patent applications on the grounds that software was simply a series of instructions for a computer, and not a “machine” as defined by patent law.
However, in the 1980s, the USPTO began to grant patents for software-related inventions under the “business method” category, in which software was considered a process that could be patented. This trend continued through the 1990s, with the USPTO granting more and more software patents.
In the late 1990s and early 2000s, a number of court cases challenged the patentability of software, with the Federal Circuit Court of Appeals ultimately ruling that software was indeed patentable subject matter.
However, the Supreme Court in the case of Alice Corp v. CLS Bank in 2014, established a two-part test to determine patent-eligible subject matter under 35 U.S.C. § 101. This test, known as the “Alice/Mayo test”, has been used to invalidate many software patents, as it requires that the invention must be tied to a particular machine or apparatus, or that it must transform a particular article into a different state or thing.
In more recent years, there’s been a growing debate about the effects of software patents on innovation, with some arguing that the current system stifles innovation and makes it difficult for small companies and individual developers to create new products without fear of infringement.
Overall, the history of software patenting in the United States has been marked by a gradual evolution of legal precedents and court decisions, leading to the current state of patent law in which software can be patented but is subject to specific restrictions and tests.
What are some examples of software patents?
The number of software patent applications has been steadily increasing over the years. According to USPTO data, the number of software patent applications grew from around 25,000 in 2001 to around 60,000 in 2018. In 2019, software patent application reached around 68,000. While there is no update of official statistics, it is a safe bet that 1/3 to 1/2 of new patent applications involve software in some capacity due to the prevalence of software in our modern society.
The patent protection you can get for your software invention depends on the type of software you are creating. It’s important to understand that the phrase “software patents” does not refer exclusively to computer programs. In fact, many types of software qualify for patent protection in their own right.
Some examples are:
● Software that controls a piece of machinery or equipment
● Computer programs used by doctors and other healthcare professionals
● Software used in video games
Another thing to keep in mind is that even if what you have created doesn’t qualify as its own category of patentable subject matter, it still might be possible to protect aspects of it through a combination of different types of patents (depending on its nature).
How can I tell if my software is eligible for patent protection?
To determine if your software is patentable, you should consider the following criteria:
- Novelty: Your software must be new and non-obvious. It cannot be identical or substantially similar to any existing software.
- Utility: Your software must have a specific, useful and credible purpose.
- Non-abstract: Your software must be tied to a particular machine or apparatus, or it must transform a particular article into a different state or thing. Abstract ideas, mathematical formulas, and mental processes are not patentable.
- Enablement and Written Description: Your software must be fully and clearly described in the patent application, so that someone skilled in the field could understand how to make and use it.
- Claimed subject matter must be statutory: The claims, as supported by the description, must meet the 35 U.S.C. 101 criteria on subject matter eligibility. An inventor can show that the software invention is linked to a specific machine or apparatus or that it transforms an article into a new state or thing in order to overcome a 101 rejection. The inventor may also argue that the invention solves a problem in a unique and non-obvious manner. A patent attorney can help you navigate the process..
You can check the USPTO website to see if your idea is novel. You can also search the patent database to see if your idea has been patented. In addition to the patent databases, the PTO relies on industry publications such as the IEEE journals. If you find that there are already patents or publications that describe similar approaches to yours, it is possible that your software invention will be considered by an examiner at the USPTO to be non-novel or obvious. However, a good attorney can help you with determining patentably distinct differences between such prior art and your invention, so it’s important to consult with a patent attorney to help you determine if your software is patentable. They can help you evaluate your software against the criteria set forth by the U.S. Patent and Trademark Office (USPTO) and the courts, and advise you on the best way to proceed with your patent application.
What are the steps to filing a software patent?
The steps to filing a software patent are as follows:
- Conduct a patent search: Before filing a patent application, it’s important to conduct a thorough search to see if your software invention is already patented or if it’s similar to any existing software. This will help you determine if your invention is novel and non-obvious, which are requirements for patentability.
- Prepare a patent application: A patent application includes a written description of your software invention and at least one claim that defines the scope of your invention. You should also include any drawings or diagrams that help explain how your software works.
- File a provisional patent application (optional): You may file a provisional patent application to establish an early effective filing date. This will give you up to 12 months to file a non-provisional patent application, during which you can test the market, gather feedback and make adjustments to your invention.
- File a non-provisional patent application: Once you’re ready, you’ll need to file a non-provisional patent application with the USPTO. This application should include the written description and claim(s) of your invention, as well as any drawings or diagrams.
- Respond to USPTO office actions: After you file your application, the USPTO will review it to ensure it meets the requirements for patentability. The USPTO may issue office actions that request additional information or make rejections. You’ll need to respond to these office actions within a specific timeframe.
- Wait for your patent to be granted: After your application is approved, the USPTO will issue a patent. This process can take several years, depending on the workload of the USPTO and the complexity of your application.
It’s important to note that the process of obtaining a software patent can be complex and time-consuming, so it’s highly recommended to consult with a patent attorney who can guide you through the process and help ensure that your application meets the requirements of the USPTO.
Can I discuss my invention with others before filing a nonprovisional patent application?
While you can discuss your invention with others before filing a nonprovisional patent application, but you should be careful about how and when you do so. Under U.S. law, any public disclosure of your invention, including discussion with others, can be used as evidence that your invention is not new and non-obvious, which are requirements for patentability. This means that if you publicly disclose your invention before filing a patent application, you may lose the ability to obtain a patent.
One way to protect your invention before filing a nonprovisional patent application is to file a provisional patent application. This will establish an early effective filing date, which can be used to establish priority over later filed patent applications or public disclosures. You can then have up to 12 months to file a nonprovisional patent application.
Additionally, you can discuss your invention with others under a confidentiality agreement, also known as a non-disclosure agreement (NDA), which binds the other party not to disclose any information about your invention. This can be an effective way to share information about your invention with potential investors, partners, or collaborators without risking loss of patent rights.
It’s important to remember that discussing your invention with others before filing a patent application can be risky, so it’s highly recommended to consult with a patent attorney before making any public disclosures. They can advise you on the best way to protect your invention and guide you through the patent application process.
After filing your patent application, while secrecy is still desirable, business reasons may require you to promote your invention. Post filing, you can safely discuss your invention with anyone, including the media and potential investors. You can also write about your invention and make and sell products that embody your invention after filing a nonprovisional patent application.
However, it’s important to avoid disclosing critical information that might be used by another person (even unintentionally) to make or use the same or similar invention. If you feel that you need more guidance on this issue, there are several websites that provide useful tips on how to keep control of your intellectual property assets while sharing them with others:
● U.S Patent and Trademark Office’s Online Publication “What You May Not Do Before Filing a Patent Application”
● USPTO Publication 1450: How Do I Research My Invention?
Do I need to hire a patent attorney to file my provisional or nonprovisional application?
Filing a patent application on your own is possible, but it’s not easy. It requires that you have a thorough understanding of the laws and processes involved in filing patents, and that you can navigate them on your own.
If you’re looking to do it yourself, the first place to start is with our guide to filing a provisional patent application (PPA). There are several good resources on how to file non-provisional applications as well; many are written by patent attorneys who’ve had success helping clients file these documents themselves.
What if there’s no time to file a Full Patent application But you need to talk to an investor or do a press release today?
If you find yourself in a situation where you will talk about your invention later during the day, but you have not filed a patent application, there are a few options available to you:
- Collect your product brochures, presentation deck files, and any documents that you may disclose to others during the meeting, and compile these documents to use as a provisional patent application: A provisional patent application allows you to establish an early effective filing date for your invention. This gives you up to 12 months to file a nonprovisional patent application, during which you can further develop and refine your invention, and gather the necessary information and funding to file a nonprovisional patent application.
- File a nonprovisional patent application as soon as possible: If you are unable to file a provisional patent application, it is important to file a nonprovisional patent application as soon as possible. This will establish the earliest possible filing date for your invention and give you the greatest chance of obtaining a patent.
Filing a provisional patent application at the U.S. Patent and Trademark Office (USPTO) is a multi-step process that can be done quickly:
- Prepare the application: A provisional patent application includes a written description of your invention and at least one claim that defines the scope of your invention. You should also include any drawings or diagrams that help explain how your invention works. You can use templates that are available online or consult with a patent attorney to help you prepare the application.
- File the application: You can file the application electronically through the USPTO’s EFS-Web system. You will need to pay a filing fee, which varies based on the type of applicant (e.g. small entity, micro-entity, or large entity).
- Submit any additional documents: You may need to submit additional documents, such as a power of attorney, an assignment, or a certificate of mailing or transmission.
- Wait for confirmation: Once the application is filed, you will receive a confirmation from the USPTO. You should keep this confirmation as it is proof of your effective filing date.
It’s important to note that a provisional patent application is not examined by the USPTO and will not mature into an issued patent. But it will give you up to 12 months to file a non-provisional patent application, during which you can test the market, gather feedback and make adjustments to your invention.
It’s highly recommended to consult with a patent attorney to help you with the process, as they can guide you through the process and help ensure that your application meets the requirements of the USPTO.
When should I file a PCT application?
The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions, helps patent offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions.
Patent Cooperation Treaty, an internationally recognized system that initiates worldwide utility patent coverage through a single filing, is internationally recognized. An applicant may file one international patent application to a qualifying Receiving Office (such the USPTO) and designate multiple members PCT countries as coverage under the PCT. A PCT application can delay the deadline for filing individual national applications. This saves time and allows you to continue your foreign filing options.
By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a large number of countries. However, a PCT application is simply a placeholder that gives you international patent-pending status. The PCT application by itself does not grant you foreign patent rights. At a later stage called the national phase, you will need to file individual patent applications in each desired country. A PCT application can be a great way to defer costs and still retain foreign patent rights for 30 months from your first filing date.
Are there any drawbacks to filing a PCT application?
Filing a Patent Cooperation Treaty (PCT) application has some drawbacks, including:
- Cost: Filing a PCT application can be more expensive than filing a national patent application. There are additional fees associated with a PCT application, including a filing fee, a search fee, and a preliminary examination fee. Additionally, you will have to pay national fees in each country where you wish to pursue patent protection.
- Time: The PCT process can take longer than the national patent application process. The International Searching Authority (ISA) has a maximum of 18 months to conduct a search, and the International Bureau (IB) has a maximum of 30 months to conduct a preliminary examination of the application.
- Limited scope of protection: A PCT application does not grant a patent in any country, it only gives you the ability to file in each country you wish to seek protection. Once you file a PCT application, you still need to file a national patent application in each country where you want to obtain patent protection.
- Complexity: The PCT process is more complex than the national patent application process. It involves multiple steps, including filing the application, conducting a search, and undergoing a preliminary examination. Additionally, you will have to navigate the patent laws and procedures of each country where you seek protection.
- Limited options for amendment: Once a PCT application is filed, there are limited options for amending the claims. This means that if you realize that you need to make changes to your application, you will have to do so before the application is filed.
It’s important to keep in mind that filing a PCT application is not always the best option for every inventor and it’s highly recommended to consult with a patent attorney to help you evaluate whether PCT is the best choice for your invention and to guide you through the PCT process.
Software patents can be complicated, but they Are an important part of protecting your innovations.
Yes, software patents can be complicated due to the rapidly evolving nature of technology and the legal precedents that are still being established in this field. However, software patents are an important tool for protecting your innovations and providing a competitive advantage in the marketplace.
Obtaining a software patent can give you the exclusive right to make, use, and sell your invention for a period of 20 years from the date of filing. This can provide a significant economic benefit by allowing you to monetize your invention and prevent others from profiting from your work without your permission.
Additionally, a software patent can also serve as a powerful marketing tool, helping you to establish credibility and build trust with potential customers and partners.
It’s important to keep in mind that the process of obtaining a software patent can be time-consuming and costly, and it’s highly recommended to consult with a patent attorney to help you navigate the process and protect your intellectual property.