Computer software has revolutionized the world around us and is constantly used to improve and innovate in every industry. Although software is currently the most impactful category of inventions, its place in the US and world patent systems has been the subject of much debate and controversy.
Computer software refers to a set of programs and associated documentation and data. Software code can be thought of as a set of instructions for the hardware of a computer to execute.
Computer software is protected under both copyright and patent law. Copyright law protects the expression of how the code is written, while patent law protects the functional aspects of what the code does.
There are many inventions that incorporate software to achieve a result. For example, a social media app, a machine that automatically sorts packages at a warehouse, and a QR code scanner. These will be referred to as software related inventions.
This article examines how the patent system applies to software related inventions.
Can You Patent Software?
Yes, you can patent an invention that uses or incorporates software.
An inventor would only be interested in applying for a utility patent for their software related invention. Design and plant patents would not be useful in protecting a software related invention.
Inventions incorporating software can be patented before even writing the code. A patent protects the overarching design and architecture of the invention and software which produces the desired outcome.
Say your invention is connecting a microcontroller to a camera and spray bottle so that it sprays a plant with water when the leaves start to turn brown. You may get a patent on this overall concept before writing the exact software code for the microcontroller.
The eligibility criteria for a software related patent is the same as other technology fields. Eligibility criteria for a patent includes subject matter, novelty, nonobvious, and usefulness.
Subject Matter Eligibility
To be eligible for a utility patent an invention must be either a process, machine, manufacture, or composition of matter.
Although executing software code in and of itself can be considered a process, courts have closely scrutinized how the subject matter eligibility criteria applies to software.
The invention must be novel, meaning new and never having been done before. Get familiar with the term “prior art” before you begin the application process.
Prior art is any published literature describing any part of your claimed invention. Patent examiners spend a lot of their time searching through data bases to find prior art. You may not obtain a patent on anything that exists in the prior art. Prior art includes patents, patent applications, non-patent literature, and anything else that is publicly available.
The invention must not be obvious. Obvious to whom? The United States Patent and Trademark Office (USPTO) uses a standard called a Person Having Ordinary Skill In The Art (PHOSITA).
If a PHOSITA would find the invention obvious, then it is not eligible for a patent. What a PHOSITA would find obvious varies with the art category and is subject to some debate.
A PHOSITA in the art of software related inventions would be a developer, programmer, or computer engineer.
The invention must be useful. This is an extremely low bar to meet, nearly anything can be considered useful.
Software as an Abstract Idea vs Patentable Invention
Even if an invention falls under a subject matter eligible category it may not be subject matter eligible if it falls under a judicial exception. Judicial exceptions include abstract ideas, laws of nature, and natural phenomena.
The Supreme Court of the United States reasoned that because abstract ideas, laws of nature, and natural phenomenon "are the basic tools of scientific and technological work", monopolizing these tools by granting patent rights may impede innovation rather than promote it.
The claims of the patent must not be directed to a judicial exception unless “the claim as a whole includes additional limitations amounting to significantly more than the exception.”
Applying this rationale to software patents, courts have held that simply implementing a mathematical principle on a computer, is not a patentable application of that principle.
For a software related invention to overcome this judicial exception it must have a real-world application.
To better understand how the judicial exceptions apply to software, consider a new algorithm discovered by Alphabet INC. described in this article. Ignoring the currently unresolved question of whether an AI can be considered an inventor and imagine that Alphabet files a patent on this discovery.
The USPTO will consider the algorithm an abstract idea or a law of nature. Because the patent application is directed to a judicial exception a patent examiner will then consider two questions.
- Does the patent claim recite additional elements that integrate the exception into a practical application?
- Does the patent claim recite additional elements that amount to significantly more than the exception?
If the answer is yes to either of these questions, then the patent is subject matter eligible under the judicial exceptions.
Alphabet would not be able to patent the algorithm on its own. Alphabet must find some way to apply the algorithm to be successful in obtaining a patent related to their discovery. That patent would protect that application of the algorithm but would not prevent others from using the algorithm for different applications.
How the USPTO applies the judicial exception analysis to software related patents can be difficult to understand. Using the services of a patent attorney who specialized in software related patents is highly recommended.
Software Patents Pros & Cons
There are many things to consider before applying for a patent and applying patent law to software related inventions is especially complex. Using the services of a patent attorney is always advisable. A patent attorney can help you understand the possible benefits and drawbacks of applying for a patent.
Pros of Software Patents
- Protect your invention – a patent holder can use their patent to stop other from copying their invention. Patents can be useful tools to prevent competition.
- Software is lucrative – software is extremely useful in performing a wide range of tasks and can be used to generate a lot of money.
- Software has many applications – software can be used to make improvements in virtually every industry.
Cons of Software Patents
- Hard to get a patent – it is a tough task to define software in a way that allows the USPTO to grant a patent.
- Expensive to get a patent – a harder patent to get means higher patent attorney fees.
- Loss of trade secrets – an invention described in a patent application is no longer eligible for trade secret protection.
- Software is only profitable for a couple of years – the rapid innovation in the software industry means that software is typically replaced in a couple of years. A software related invention may be obsolete by the time an inventor receives a patent.
- Many people have issues with patenting software – there is an international debate regarding if patent law should be used to protect software. Not all countries recognize patent rights in software.
- Copyright protection might be enough – considering all the other cons, it may just be easier and cheaper to rely on copyright protection.
How Do You Patent Software?
The process for patenting a software related invention is like patenting other inventions. It starts by inventing something new and ends with a granted patent preventing others from copying your invention.
Step 1: Turn your idea into an invention
Every invention begins as an idea. For this idea to become eligible for a patent it must be transformed into an invention. The idea must be tied to something in the real world.
Transform your idea into an invention by building a prototype. Test out the prototype and make improvements to it. Consider all the different variations of your invention that you can think of.
Step 2: Contact a Patent Attorney
An inventor should contact a patent attorney once they have an invention, they are considering patenting. Although not required to file a patent, it is highly advisable to use the service of a patent attorney.
A patent attorney can assist an inventor on every step of the patenting process, and draft strong claims that ensure the invention is adequately protected. A patent attorney will help the inventor to decide the best path forward in applying for a patent.
Step 3: Perform Market Research
A patent provides an economic incentive for people to invent new things. There isn’t much point in applying for a patent if you can’t profit off the invention. Performing market research helps the inventor make an informed decision about whether paying the cost of a patent application is worth it.
Before starting the patenting process, make sure you understand the market potential of your invention and have a plan for how to make money from having a patent.
Step 4: Conduct a patentability search
The USPTO requires an invention to be novel so a patent cannot claim anything that already exists. Before beginning the application process, an inventor must explore what has already been done to make sure they can patent their invention.
A patentability search, also known as a prior art search, attempts to discover as many relevant sources as possible that might be used by the USPTO to prevent a patent from being granted. An inventor should always do their own preliminary research to understand the technological field. A good place for an inventor to start conducting their own research is Google patents, Google scholar, and the USPTO patent database. Try using different combinations of Boolean and keyword searches. Google patents has a function that shows related patents at the bottom of the page. Explore as much as you can. The USPTO has a step-by-step tutorial of how to conduct a preliminary patent search.
Although inventors should conduct their own research, it is recommended to use a professional researcher. A patentability search can be conducted by a patent attorney, or a patent research company. Professional research services have subscriptions to databases, giving them access to more sources than an independent inventor would have.
If an inventor is not trained in performing research, they may miss important prior art references. Using a professional researcher provides the highest level of confidence that your invention is unique, and worth taking to the next step in the patent process. A professional research company may charge anywhere from $100-$1,000+ for a patentability search depending on the complexity of the invention.
Step 5: Determine Inventorship and Ownership.
An inventor is entitled to ownership of a patent for their invention. Who the inventor is might not always be clear.
A person is considered an inventor if they contributed to the conception of the invention. If multiple people contribute to the conception, they are all considered inventors. If a person is a named inventor on a patent, they have rights to the entirety of the patent.
If there are two or more inventors, each can separately, and without permission of the other, use and license the use of the patent. This can be an issue because co-inventors can become direct competitors of each other. To prevent this issue from arising, co-inventors may sign a contract before filing the patent application. They may agree to not compete, or they may form a company that they all own and assign the patent rights to the company.
Most companies include intellectual property clauses in their employment contracts assigning all employees' ideas and inventions to the company if made “in the scope of employment.” If you invent something during your job, for your job, and file a patent for it, you may be considered the inventor, but the company owns the rights to the patent.
If you are employed, it is very important to read and understand your employment contract. Consulting a patent attorney is highly recommended to interpret the meaning of intellectual property clauses in employment contracts.
Before proceeding with a patent application discuss with your patent attorney who conceived what aspects of the invention. Discuss with all inventors how credit for the invention should be allocated.
Step 6: Prepare the Patent Application.
Most inventors use the services of a registered patent attorney to prepare and file the patent application. Although an inventor may file and obtain their own patent, there is no guarantee that the patent would sufficiently protect the invention. Each patent application has several forms that must be filled out and submitted. The patent specification can be drafted from scratch or by using templates found online.
If you are an individual inventor, you should also fill out the certification of micro entity status form to reduce the amount of fees due. All applications must be submitted to the USPTO in English.
Step 7: Submit the Patent Application.
The typical method of filing a patent application is using the USPTO’s Electronic Filing System (EFS-Web). Navigate to the EFS-Web portal and create a USPTO account. The required documents are uploaded to EFS-Web in PDF format and submitted. Fees are also paid through the EFS-Web portal.
Applications can also be filed by mail or delivered in person to the USPTOs main office in Alexandria, VA. Applications should be mailed to “Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450.” Applications filed by mail or in person are charged an additional fee.
Step 8: Wait for Approval (Notice of Allowance)
It takes some time for the USPTO to start examining an application due to the large number of applications received. The time it takes for the USPTO to begin examining a patent varies by the technological field of the invention. The historical time to receive a first office action is around 18 months. Very few applications are approved on the first office action.
The applicant then fixes the issues the USPTO indicates in the first office action and resubmits for a second examination. If the applicant correctly fixes all the issues, then a notice of allowance is issued. The typical amount of time for a patent application to make it to an allowance or final rejection is around 24 months.
While the application is pending you may view the status using the USPTOs Patent Application Information Retrieval Tool (PAIR). Log in using your USPTO account. PAIR shows where your application is in the process and any action items that you need to address. Correcting issues or uploading more documents is done in the EFS-Web portal.
Step 9: Petitions and Appeals
If your application is rejected a second time you may appeal the decision. Appeals at the USPTO are heard by the Patent and Trademark Appeals Board (PTAB). PTAB judges differ from normal judges because they have significant experience and expertise in patent law.
The judges will review the examiner’s decision, hear arguments from both the applicant and the USPTO, and make a final decision on whether the patent will be granted or not. To appeal a final rejection file a notice of appeal in the EFS-Web portal and pay the appropriate fees.
Like a normal court of law, an individual can represent themselves in an appeal hearing, but using the services of a patent attorney is highly recommended.
Step 10: Use your patent and enforce your rights
Just because you have a patent doesn’t mean that people won’t infringe your patent. It is the responsibility of the patent owner to enforce the rights granted by the patent. If you think someone is infringing your patent, you should contact them in writing and explain why you think they are infringing your patent and ask them to stop. If they do not stop, you can initiate a lawsuit in a federal court and attempt to stop them from infringing your patent and for damages in lost profits. In court, your patent is a valid legal document that defines your invention and will be used to prove infringement.
Software Patent Examples
The following examples are all software related inventions that were granted a patent by the USPTO. Notice that the inventions are not the software itself, but the result that the software achieves. These inventions are described in much more detail here.
- A server wirelessly coupled to a mobile GPS receiver uses a mathematical model to solve for the mobile receiver position without receiving satellite positioning data or absolute time information from a satellite.
- Isolating and removing malicious code from electronic messages (e.g., email) to prevent a computer from being compromised, by physically isolating a received electronic communication in a “quarantine” sector of the computer memory.
- Retaining control over customers during affiliate purchase transactions, by creating a system for co-marketing the “look and feel” of the host web page with the product-related content information of the advertising merchant’s web page.
- Improving halftone techniques by developing an improved mask called a “blue noise” mask. The blue noise mask requires less memory than previous masks and results in a faster computation time while improving image quality.
All these patent applications were able to overcome the subject matter judicial exceptions by having a real-world application. The inventors likely filed a patent because they planned to commercialize the invention and would not practically be able to keep it a trade secret.
FAQs About Software Patents
The cost for patenting a software related invention varies but may be in the range of $3,000-$12,000+. These costs include conducting a preliminary patent search, USPTO fees, drawing fees, and patent attorney fees. A typical breakdown of expenses is reflected in the table below.
Software patent application cost ($):
|Preliminary patent search||$100-$1000|
|Patent Attorney fees||$2000-$8000+|
A utility patent covering a software related invention has a maximum life of 20 years after the date the application was filed. A software patent may also expire early if maintenance fees are not paid.
Copyright protections extend to the expression of how the code is written. Copyright law can be used to protect code in the same way copyrights can protect a book. The original author can prevent others from copying the way the code was written.
A copyright exists the very moment the expression is put into a tangible medium. As soon as the code is written a copyright exists and is vested in the person writing that code. However, a copyright must be registered to effectively sue another for copyright infringement.
A patent on the other hand can be used to protect the function of the code. Patents can be used to protect the result of what the code achieves.
Relying solely on copyright law may not be enough to protect your invention. There are many ways to organize and write code to produce the same result. Therefore, it is possible for someone to copy your invention without infringing your copyright.
Say your invention is an app that shows where people are playing pickup basketball in your city. The copyright covering the code can prevent others from copying the exact code used for the app. Someone else could write code in a different way that also creates essentially the same app. You could not use your copyright to prevent them from making the app.
Now consider that you applied for and received a patent that covers an app that shows where people are playing pickup basketball. Then someone else comes along and uses a different code that produces the same result. You could effectively use your patent to prevent them from making this app.
Patents protect ideas while copyrights protect expression.
No, you never need a lawyer to file a patent application. However, it is always advisable to consult with a patent attorney. Software related inventions are very complex, and it would be very difficult for an inventor to get a patent without the help of a patent attorney.
Sheldon received his training of the patent system at the United States Patent & Trademark Office. He works with universities and consultants to provide analytics and guidance for technology commercialization from patents.
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- N.A. (2020, June 25) 2106 Patent Subject Matter Eligibility [R-10.2019] Retrieved from https://www.uspto.gov/web/offices/pac/mpep/s2106.html
- N.A (ND) Subject Matter Eligibility USPTO Guidance and Policy. Retrieved from https://www.uspto.gov/sites/default/files/documents/MWRO_101_Eligibility_OPLA.pdf
- N.A (2016, December) Examples: Abstract Ideas. Retrieved from https://www.uspto.gov/sites/default/files/documents/101_examples_1to36.pdf
- Charles Q. Choi (2022, October 26) When AI “Played” Math, It Cracked an Internet Chokepoint. Retrieved from https://spectrum.ieee.org/matrix-multiplication-deepmind