1. Provisional Patent Software
2. What is a Provisional Patent?
3. Can I Patent a Software Product?
4. How to File a Provisional Patent Application

Provisional Patent Software

Until recently, there was debate over whether an inventor could file a provisional software patent. It was not until 2014 when both the United States Patent and Trademark Office (USPTO) and the court system started implementing a two-part test to determine whether provisional patent applications for software were valid.

What is a Provisional Patent?

A provisional patent is somewhat of a misnomer. There is no such thing as a provisional patent, but rather a provisional patent is technically a provisional patent application, since a provisional patent application cannot result in an issued patent on its own.

One of the purposes of a provisional patent application is to give the inventor time to save enough money to get through the more rigorous patent review process and to continue working on his or her invention, with the ultimate goal being of filing a non-provisional patent application.

Because there are no explicit requirements, a provisional patent application is much cheaper to file than a non-provisional patent application. An inventor does not need to consult a patent attorney to file a provisional patent application, and the U.S. Patent Office does not even analyze the application in depth. All the U.S. Patent Office does is tell the inventor if the application is complete or not complete. Once the inventor files a non-provisional patent application based off of the provisional application, then the U.S. Patent Office will start the more rigorous process of reviewing the application.

Applying for a provisional patent application has many benefits. For software specifically, it gives the inventor a year to decide whether to file a non-provisional patent application, during which the federal government could modify the rules governing software patents.

More generally, because the United States is now a “first to file” country, as opposed to a “first to invent,” country, applying for a provisional patent can trigger the statutory bar deadlines and gives the inventor some protections. It is a way to establish what’s called “priority.” A priority date is used to help determine an invention’s newness, or novelty, which is one of the requirements for a patentable product. That is why it’s important that as soon as you have a tangible product that you can describe in detail, you should file for a provisional patent application. As soon as you file a provisional patent application, you can then say you have a pending patent. If the U.S. Patent Office ends up issuing you a patent, your product will then be protected for up to twenty years.

Can I Patent a Software Product?

In 2014, the U.S. Patent Office and the Supreme Court of the United States took up the issue of software patents. In deciding whether or not a software could be patented, they followed a two-part test:

• Are the patent claims directed towards an abstract idea?

• Do the claims contain an inventive aspect that would transform the abstract idea into a tangible product that could be considered patentable?

The United States Supreme Court, in applying this two-part test, has ruled that an abstract idea, by itself, is not sufficient to meet the requirements of a patentable product. The Court and the U.S. Patent Office give more weight to the first part of the test.

It is often hard to predict what types of software the U.S. Patent Office will deem abstract versus eligible. As of late, the U.S. Patent Office has stalled somewhat on reviewing some of its software patent applications. It has yet to be determined if this will change once the U.S. Patent Office revises its patent examination guidelines to include recent court decisions and policy guidelines. However, one category of software patents that have consistently remained patentable is any software that impacts the operation of the computer itself.

How to File a Provisional Patent Application

There is no formal application form that you have to fill out when filing for a provisional patent application. However, many people use the non-provisional application forms as a guide, or turn to templates that are easily accessible on the internet. Provisional patent applications do not need to be as detailed as a non-provisional application, and the U.S. Patent Office will merely tell you if it is complete or not complete, as opposed to analyzing every substantive aspect of the application.

If you need help filing a provisional software patent, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5-percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law, and average 14 years of legal experience, including work with, or on behalf of companies like Google, Menlo Ventures, and Airbnb.