Updated July 24, 2020: 

Software Patent Attorney

A software patent attorney advises software inventor clients on the patent registration process. Application for a patent through the United States Patent and Trademark Office requires documentation of an invention, including a description of conception, and a stepwise discussion of research and development, including innovative ideas for improvements that may result in future patents. Software patents are filed with the USPTO under the category of utility patent. The application developed must be a new and purposeful process evidenced to be integral to the generation of business or other key processes. While it is not possible to patent a mathematical formula or scripted programming code without the software utility in place, those elements may be innate aspects of the invention.

Since 1998, software developers and companies have sought patents for software applications, software compilers, and software processes. According to USPTO guidelines, the software must follow the same rules of patenting as other inventions. Under federal law, the patentable subject matter includes new and useful processes, manufacture, machine, the composition of matter, material, or new improvement. More broadly, “process” is art, method, or actual process. Software attorneys representing inventors, inventor groups, or companies in the submission of patent application, can reduce the time to approval with expert counsel. Software and hardware are one of the top categories of the patent invention on record for litigation disputes.

Developer teams that have shared knowledge about the software code they are working, disclosing activities to online forum communities, and other open professional discussions, stand to risk patent ownership. Confidentiality agreements are common recommendations by software patent attorneys, practiced in mitigating risk to inventions in-process.

Drafting software patent applications is time-consuming and can be costly if not done properly. Some inventors seek provision patent of an invention to obtain rights to “patent pending” notice during the research and development phase of a software idea. The cost of a provisional patent is less expensive than a non-provisional patent and must be followed by an application for final patent registration in one year from the date of approval. Applicants submitting patent applications are not required to prototype an invention, and this is not expected at the provisional patent application stage.  

Litigation over patent licensing has increased in the United States with software patents and other computing-related inventions. Remedies to plaintiffs have also increased, as U.S. courts award patent holders substantial compensatory damages for tortious violation of patent entitlements. Notable lawsuits include DCS Communications v. General Instruments resulting in $140 million in damages paid to DCS; Stac Electronics v. Microsoft resulting in $120 million paid in damages to Stac; and MercExchange v. eBay resulting in $35 million paid to MercExchange.

Applications for Patents, Trademarks, and Copyrights

Patent lawyers advise clients that licensing intellectual property is a distinct advantage in court should another party sue for rights to enrichment from an invention. Copyright, trademark, and patent protect intellectual property rights in different ways. The United States Copyright Office website provides the documents and portal for official copyright registration of original ideas. While copyright of creative works is by default manifestation of those ideas is a mano (i.e. by the hand), filing for official copyright secures rights to enrichment; the entitlement of the original creator without prior consent to use or distribution by the copyright owner.

Trademark is closely tied to commercial interests and is typically a registration of a “doing business as” DBA fictitious business name, brand, logo, slogan, word, or other idea meant for profitable use. The Trademark of software exhibits a company’s rights to ownership of the product or service and communicates the legitimacy of the product or service is authentic. Patent, on the other hand, is specifically assigned to the invention. Software patents are then utility patents because registration is directly related to a process, and its utility in the science, technologies, and business fields. The uniqueness, integrity, and valuation of software as intellectual property must be proven to be patentable. Legal planning and collaboration between an intellectual property attorney and a client can make a significant difference between a solid or weak IP registration of an invention, which in turn can have a substantial impact on the market value of its worth and performance in the computer and other high-tech industries.

Avoid Future Disputes and Maximize Protection

An application for a patent or trademark with the USPTO submitted by an attorney has a better chance of approval in the first examination. IP attorneys are skilled experts, experienced at the patent application process. Patent applications drafted by attorneys are thoroughgoing documents with comprehensive legal integrations that better enable clients to withstand any attempts at infringement by other developers.

Where is the Industry Heading?

The advance of the legal profession with software patent lawyering coincides with the rise of the technologies industries fueled by those code written applications. As a result, patent attorneys are responsive to new software innovation, and not only represent the interests of inventor clients, but at times participate in the development of new laws. Supreme Court patent eligibility case filings are extensive. The software has been a bulwark in the legal arena, as judges and legislators make up-to-the-minute decisions about those innovations as a category of intellectual property within the law.

An example of the discretionary changes made to U.S. federal law is the enactment of the Leahy-Smith America Invents Act (AIA) of 2012, the legislation that outlines rules to patent. The Act makes a prohibition on the patenting of tax strategies, with the exception of computer programs employing a tax strategy. The Federal Circuit made up of numerous district courts, and the Patent Trial and Appeal Board (PTAB) with the USPTO, have used the Alice decision to reject software patent claims as being patent ineligible.

The 2014 decision established strict prohibitions on software patenting unless an element within a hardware device or operating system architecture. The rationale to the decision being that software instructs an operating system of a machine to accomplish specific tasks. Since Alice, a new precedent has overturned some of those decisions. Law, it seems, follows technological invention more often than not.

Patent attorneys working with patent clients generally recommend in-depth technical orientation as part of the description to disclosures, thus making an application or system more tangible to a patent examiner or judge. Industry groups dedicated to the formation of statutory language to support inventors in patent eligibility of software and other technologies, address future reform of Section 101. For attorneys, the future of law, then, is also undergoing innovation.

Best Practices for Drafting Software Patent Applications Post-Alice

Attorneys involved in the development of best practices for drafting software patent applications post-Alice are involved with a core challenge in the practice of law. The spark of the invention is sourced in creation, yet utility patent approval is constrained to existing guidelines. When new invention seems outlandish in conception or in form, the terms normally sourced in a court decision or legislative rule, are at best a policy recommendation, or perhaps regulatory rules more generally applied to manufacture compliance.

The Patent Office now issues many software patents. Prior art search enables an intellectual property attorney to determine if a patent registration number for the same invention exists. An extensive list of software patents can be found in the USPTO database. Fortunately for developers, software remains eligible for USPTO patent. At least some patents are issued covering software-related inventions each week, and no one seriously believes the software will become patent ineligible.

At times characterized as dinosaurs in the law practice intellectual property law, U.S. courts and the federal Congress are beckoned by technology policy groups to advance legal knowledge and action where new innovations are concerned. Globally speaking, such assertions not entirely unmet, yet the U.S. has long been an influential leader of the digital economy, and nationally esteemed nexus of technological innovation.

Progenitors of software have a good chance at USPTO patent application approval with a software patent attorney. Entitlement to software patent registration rights is the sought-after result of the process. A software patent attorney provides a developer or investor with expert legal advice and due diligence in prior art search investigation. Patent examiners will have the information they require to consider a utility patent for a software invention if a filing is done properly.

A prototype of a software application is not required for USPTO patent application, however, such a method assists in research and development, as well as documentation of the invention process, including testing of a product. Patent applications also require a drafted illustration or another rendering, showing the steps of invention conception to point of finished application, process, or result. An intellectual property attorney will represent a client in securing the rights to the invention, as well as the documentation submitted to the patent examination as part of the overall patent.

Tangible components strengthen the power of a software utility patent application. An application including a description of hardware or alternatives for improvements of an existing patented idea transformed into a new process or application discusses exactly how a computer-implemented process is distinct in design and utility. Logic gates are critical elements in software-implemented processes. A patent application should discuss how the new software manipulates logic gates to substantiate a request for patent registration.

With the counsel of intellectual property attorneys, inventors have made inroads in the legal realm, as computing technologies precede all written law. In Washington State, for instance, the headquarters of software giant, Microsoft, the persistence of “unwritten law” as an acceptable basis of judicial decision, has created the conditions for new software patent eligibility. The U.S. Supreme Court has also expanded legal interpretation of patent to include software, statutory provisions have in response narrowed to meet the specificity of process.

For inquiries about software patents in the United States, post your legal need at the UpCounsel marketplace. UpCounsel lawyers represent the top 5 percent attorneys in the United States, graduating from top law schools such as Harvard Law School and Yale Law and average 14 years of legal experience, including work with or including companies like Google, Menlo Ventures, and Airbnb.