What is a Software Patent?

A software patent is a property right that protects computer programs or any performance of a computer from computer programs. A software patent is considered a type of utility patent with no true legal definition. Software patents are a topic of controversy both in the United states and around the world.

A software patent differs from a software copyright. Both protect the product, but a copyright only covers the expression of an idea. For example, it might cover only the exact written code of a software program. Software patents and software copyrights are both a part of intellectual property law.

According to US law, software (sometimes legally called computer implemented processes) is a patentable item. However, like any other invention, the software must meet certain criteria.

  • There is an industrial or commercial way to use the invention. That means that the software is used with a machine. This ensures that you're are not trying to patent a "pure business method," such as a process that takes place in your head.
  • The invention is new, unique, and not obvious to anyone with average skills in your industry.
  • The patent application is filled out in detail. All the information about the product— known as the disclosure — meets the guidelines that the United States Patent and Trademark Office (USPTO) sets out.

Getting a Software Patent

Consider Whether You Need a Patent

151 countries are part of the Berne Convention for the Protection of Literary and Artistic Works. That just means that, in these countries, copyright protection is automatic. When you create your software, it already has a measure of protection. This protection lasts for the rest of your life and up to seven decades after your death.

Patents, however, are much more complex and expensive. You must apply for a patent in each country where you want protection. If you want international protection, you have to submit a special patent application under the Patent Cooperation Treaty. Then each region or country considers and grants the patent according to its own laws.

Despite the complexity of the patent application process, many software developers still choose to apply for patents because they offer more protection.

Define Your Software

If you have a piece of software that you would like to get a patent for, look at your project as if you were an engineer. Be able to clearly define your invention's overall design down to the smallest detail. With this detailed understanding, you and your patent attorney can get the best protection possible for your software. You might ask yourself the following questions.

  • What is unique about my software?
  • What is my software's desired function?
  • How does the software handle information?
  • What is the user interface like?
  • What problems does my software solve?
  • What parts of my program do I want to protect with a patent?

The software patent application requires you to see your invention from different viewpoints. You'll have to look at it from the perspective of the end-user and a computer. You also have to look at it from a systematic, architectural point of view.

Perform Research

Before you start on the patent process, do a patent search. This helps you learn about similar software programs, and it gives you clear ideas on what is unique about your software. The search also helps you decide if the effort it takes to get a patent is worth it. If there are already a lot of patents that cover programs like yours, you won't be able to get a broad level of protection. The time and cost associated with the patent process may not be worth it.

Keep in mind that patent research presents its own expense if you are going to do it properly. You have to sort through existing patents and try to decide if the owners of those patents would view your product as an infringement.

Patent research is a tricky process, so cooperate with your lawyer during the search. At the end of your search, you should have a detailed report about other patents that may relate to your invention, and that information helps you fill out your own patent application.

Work on the Application

A solid software patent application has the following parts:

  • A description of the system in which your software works
  • A flowchart that gives a general overview of how the software will work
  • More flowcharts that give many details about how your software will reach its goal

Flowcharts will make it easier for you and your audience to understand your invention in-depth.

Rely on Your Attorney

A qualified lawyer coaches you through each step of the patent application process. Your attorney is especially useful when you're drafting your application. This step is so important because after you file the application, it is difficult to change it. The claims describe the specific parts of your software that you want the patent to protect, so they are an especially important part of the process.

When you and your attorney work together to fill out the application, it is less likely that the USPTO will reject it.

Why Getting a Software Patent Is Difficult

You face some unique challenges if you wish to get a software patent for one of your inventions. The first challenge is that defining your invention can be difficult, especially if don't have experience with software patent applications.

The "Machine or Transformation Test"

Consider the case Bilski v. Kappos, which settled in 2010. Before that, the laws about what types of items qualified for a patent were not as clear as they should have been. This case set up the "machine or transformation test," which meant that the software — or processes — had to be tied to a machine or turn one thing into another.

But it also means that your invention shouldn't simply be for use with a machine. "More than insignificant extra-solution activity" should be involved. This means that the software or process should play an important part in achieving a goal.

It is possible that processes that do not pass the "machine or transformation" test could get a patent, but realistically, you should view passing this test as a requirement for your invention.

Design Is More Important Than Code

You do not need to write the code for a software program before you can get a patent for it. This is because, legally speaking, code is a language. The software's design and architecture, which are a "road map" for what you want your program to do, is the important thing.

A properly done patent application thoroughly describes how the computer code will carry out a certain task. The application describes how a programmer can reach a desired result with a code that makes that possible.

Issues With Software Patents

Here are a few reasons why software patents are such a highly debated topic:

  • Although US law states that abstract ideas cannot be protected by patents, this is not the case everywhere. In places where ideas that have business value can be patented, the definition of an "abstract idea" is not always clear.
  • In the worldwide marketplace, there is not a widely recognized difference between patented and non-patented software. For example, in the European Union, software can't receive patents. But there has been further discussion of the issue and an attempt to standardize instructions across the EU.
  • Legal and technical programs can hinder innovation and patentability.

Another problem is that because US patent law is fairly uniform across all types of inventions, problems arise. Software is different from other innovations because it has a short cycle, which means that most software is only profitable for a few years. It may take even longer than that to get a patent, so in many cases, the process is not worth it.

Software is also unique in that developers continue to create even without getting a patent. Copyrights and Trade Secret Protection may be enough motivation to innovate even when getting a patent isn't possible. Also, the widespread use of open source software illustrates that software continues to come into existence without any intellectual property protection at all.

A third reason software is unique in the world of patents it that these patents are often overly broad. Related to this is the fact that software is difficult to describe in precise terms.

The History of Software Patents

Software patents have been a topic of debate for decades. Originally, the USPTO avoided granting patents to inventions that used computers. In 1968, they created guidelines saying that computer programs were unpatentable. However, via a long series of court cases, this viewpoint gradually changed. These cases included:

  • Gottschalk v. Benson
  • Parker v. Flook
  • Diamond v. Diehr
  • State Street Bank & Trust v. Signature Financial Group

In 1996, the USPTO wrote "Final Computer Related Examination Guidelines." However, those guidelines were far from final. The guidelines are constantly changing as the result of cases in the Supreme Court and the Federal Court of Appeals. Guidelines issued in 2013 gave direction on both hardware and software patents. One of the primary purposes of the guidelines is to help the USPTO decide whether specific inventions qualify for patents.

Temporary guidelines were released in late 2014 because of the case Alice Corp v. CLS Bank. The Supreme Court decided that software for managing settlement risk did not qualify for a patent. It was labeled an abstract idea.

In the Alice case, the court decided that a claim on the patent application focused on an abstract idea. This is notable because most patents have some sort of abstract idea in them, but in this incident, the claim was specifically directed at that idea. The court's decision involved a lot of legalese, but the end result had a vast impact on the world of software patent law.

The Alice case set a precedent. If a piece of software improves the way a computer or another device functions, it is more likely to qualify for a patent. This case, as well as the Bilski v Kappos case, contributed to the ever-changing guidance on what is patentable and what is not. Many patents were labeled invalid after the Alice case.

After software was first recognized as deserving of patents, the USPTO still didn't research as well as it should have when reviewing applications. This resulted in some patents being issued for inventions that did not truly deserve it.

Why Do Some People Feel That Software Should Not Be Patentable?

Many believe that software patents are a threat to innovation. This is because new programs often rely on older, patented programs to work well. Patents can interfere with developers' ability to put existing programs to use. For example, a smartphone developer may be stopped from using — and perhaps improving on — a certain type of menu because a competitor holds the patent for that component.

Thousands of software patents are in effect, and each one gives its holder the right to stop others from using that software program for 20 years. This puts limits on innovation.

One group, End Software Patents, lists some reasons why they believe that software should not be patentable.

  • Software patents make it difficult to standardize across different devices, such as computers and smartphones. This leads to compatibility problems.
  • These patents can discourage or even block people from developing software.
  • Software patents create a risk to companies. If they accidentally infringe on a patent (which means they created something that fit the claims in a patent that already existed), they could face serious fines. This danger makes small businesses shy away from creating new software. This means that a handful of companies come to dominate the industry.

According to one estimate, more than $11 billion is spent every year on software patent lawsuits. The suits affect not only technology companies but many other types of businesses.

It is also worth noting that many modern conveniences, such as email and the internet, came into existence before it was widely accepted that software is patentable. The creators of these inventions did not need patents to innovate.

Are Software Patents Going to End?

In October 2016, a decision by the US Court of Appeals for the Federal Circuit weighed in on the debate over whether software should qualify for patents. The ruling said that such patents are a "deadweight loss on the nation's economy" and threaten the right of free speech that the Constitution grants.

The ruling found that three software patents, held by Intellectual Ventures, were invalid because the patented material wasn't eligible for patent protection. Intellectual Ventures had a reputation as a "patent troll," which means that it bought patents and then sought to take advantage of other companies that were supposedly infringing on those patents.

The judge in the case even went so far as to say that the Alice decision mentioned earlier effectively put an end to software patents. He also stated that the monopolies that patents grant limit free speech. Even copyright law has a provision for "fair use," and patent law ought to include something similar. He suggested that software should only be eligible for copyrights, not patents.

Another problem with patents that the case touched on is that many companies race to patent software before the software is fully developed. This is expensive and discourages innovation by other companies.

Software remains patentable, but that may not always be the case.

2016 Cases that Support Software Patents

Although many patents were invalidated after the Alice ruling, three of those were later found to have been wrongly invalidated. These may have set up a stronger future for software patents.

Those three cases were:

  • Enfish v. Microsoft
  • McRO v. Bandai Namco Games America
  • Amdocs v. Openet Telecom

Software Patents and You

Software patents and the rules around them are difficult to understand. By going to a lawyer for help, you are teaming up with an expert who keeps up with the constantly shifting landscape of intellectual property law. If you need help with your software patent, you can post your question or concern 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, Stripe, and Twilio.