Software Patent Examples: Everything You Need to KnowPatent Law ResourcesUtility Patent
Software patent examples help software inventors understand what types of software are patentable through the U.S. Patent and Trademark Ofice.10 min read
2. Real-World Software Patent Examples
3. Why Are Software Patent Examples Important?
4. Why Patent Software?
5. Software Patent Opposition
6. Making a Software Patent
7. USPTO Software Patent Examples
8. Three 2016 Cases that Gave New Life to Software Patents
Software Patent Examples: What Are They?
Software patent examples help people who invent software to know what types of software are patentable in the United States. These include virus detection software, web interfaces, content-filtering software, video compression software, and more.
Real-World Software Patent Examples
Amazon One-Click, U.S. Patent No. 5,960,411
The One-Click software lets internet shoppers avoid the online shopping cart. If users have their payment, billing, and shipping information saved, they can buy something with a single click.
Cadtrak XOR, U.S. Patent No. 4,197,590
XOR deals with displaying images that have been stored in memory.
The USPTO has issued many patents dealing with many software subjects, including but not limited to:
- Computer speed
- Computer security
- Word processing
- Business management systems
- Data compression
- Operating systems.
Courts in the U.S. have also approved software patents recently. Patterns in what the courts approve show what kinds of software are most likely to get a patent. These include:
- Networking technology
- User interface
- Machine control interface
- Internet search.
Why Are Software Patent Examples Important?
A software patent isn't a special kind of patent. Software patents are regular patents, but instead of inventing a machine or a chemical formula, you invented a computer program.
Not all software can receive a patent. The software has to meet certain standards to get a patent. These standards come from the United States Patent and Trademark Office (USPTO). They also come from Supreme Court rulings on patent cases. Figuring out if the software meets "patentable subject matter" standards is harder than with other inventions. That's why software patents have drawn so much legal focus.
Many questions surround what makes a good software patent application. There are also many questions about which software can be patented. Looking for software patent examples is key if you want to patent your software. Studying examples of existing software patents can help you figure out how to make a good patent application.
Why Patent Software?
Many startups create software to run their businesses and want to know if their software can receive a patent. The software patent discussion is a murky one. No one answer exists on whether a piece of software will meet the standards for a patent. There is also no magic way to do your application that will ensure your software gets a patent.
Standards do exist, though, even if they are murky. In 2014, the Supreme Court ruled on a case (Alice Corporation Pty. Ltd. v. CLS Bank International, et al., usually shortened to "Alice") that changed patent standards. Many people have problems with the Alice decision for talking about what you can't patent. Software patents are a major question that the Alice decision didn't answer very well, or at all.
If the precedent sounds confusing, that's because it is. The USPTO is having a hard time with some software patent applications. After court cases, they have to use new or changed guidelines when they look at patent applications. When the court cases leave questions about what counts as eligible for a patent, that causes problems for the USPTO.
Both the Supreme Court and the United States Court of Appeals for the Federal Circuit like to define technology inventions in specific ways. These definitions usually contain some kind of machine or hardware. Software doesn't always need hardware to be a unique invention. However, software that impacts hardware usually has better luck in patent applications.
The USPTO has created better definitions for software patents in two documents:
- 2014 Interim Guidance on Patent Subject Matter Eligibility
- July 2015 Update: Subject Matter Eligibility.
The July 2015 Update has examples of software that could be patented. Although it uses hypothetical software for its examples, it creates a guideline for inventors and lawyers who are applying for software patents.
Standards for Software Patents
- Is the software an abstract idea?
- Does the process turn that abstract idea into an "inventive concept"?
If your software is an "abstract idea" that will work on a nonspecific computer, then it can't be patented. So what counts as an abstract idea? Some include:
- Math formulas
- Economic practices.
Business methods sometimes overlap with software. People trying to patent either one have to prove their process is more than an abstract idea.
Software Patent Opposition
Some people think software patents are a bad idea. Critics think that software patents allow many "bad software" to get patented. Plus, they say software that is widely used ends up patented by one company or person. Sometimes they argue that software can't be defined.
One idea against software patents is that software changes quickly. In reality, some of the most well-known software has existed for several decades. Companies update software to improve it, but they don't reinvent it. Another argument against software patents is that people will keep inventing software even without patents. But when companies invest millions of dollars in software research and development, they want to be able to patent their findings.
Copyright and Trade Secret laws can protect some software, but they don't offer the same protection a patent does. The unique inventions in software need patents to be protected completely.
The opposition probably won't stop software patents. Court cases have not ruled that software cannot be patented. Although the specifics of how to patent software are still murky, software patents are granted frequently.
Making a Software Patent
What to Put in Your Software Patent Application
- Flowcharts that show each step of the software process.
- Detailed description of your algorithms and code.
- Explanation of how the software works with hardware.
You can't patent algorithms, code, or math formulas. You can copyright your code, but you cannot patent it. Since you can't patent the pieces that make up software, what you try to patent is the process itself. You need to present the software as an invention. The software has to create a unique process. That means focusing on what is special about your software.
Software patents that relate to technology have a better chance of getting approved. The areas that have the most success include:
- Networks or networking
- Design work that uses computers
- User interface (including a user interface that lets you control a machine).
Different types of software can conduct similar applications. In figuring out how to patent your software, you have to look at other software that is similar. That will help you find what is unique about your software. Some software developers think about patent requirements and research similar software before they are finished creating theirs. Doing this will help you make sure you do something different as you work on your software.
What Claims to Make in Your Application
Software patents are unique in the patent world because they need to:
- Refer to a computer or a machine.
- Include multiple steps.
You want to make both big and small claims in your software patent.
- Patenting the large concepts protects your broad idea.
- Patenting small concepts helps you survive any lawsuits that appear in the future.
If you only rely on big pieces of your software to make your patent claim, then your patent will be easier to challenge. Small concepts help prove your software is unique. Then, even if you lose the patent for a big aspect, you'll still have small aspects protected.
When you describe the software, small concepts are crucial. These small details show how the software is an invention, not an abstract idea. You want to describe it so another person could follow your directions and recreate your process without any guesswork.
Provisional and Nonprovisional Patents
Some companies who want to patent their software file provisional patent applications. A provisional patent application can buy you time if the USPTO is creating new guidelines or when court case results are pending. It holds your place, protecting your software while you prepare a nonprovisional patent. A provisional patent expires after a year. If you haven't filed a nonprovisional patent by that time, your software will no longer be protected.
If you have questions about whether your software patent will be approved, the slow process might work to your advantage. Software patents filed today will probably wait two or three years for First Office Action on the Merits. If any legal question about that software's patentability comes up, legislation will probably take another year and a half to two years. Therefore, if you file your software patent today, the law that the Patent Office will use to look at your application probably doesn't exist. A lot can change in a few years.
USPTO Software Patent Examples
The July 2015 Update from the USPTO has several examples that help define what works as a software patent. Not all these examples are from real patents.
This example has to do with software that lets someone know about time-sensitive information even when his or her computer is off. The USPTO says this software solves a problem that already existed within technology. Therefore, it moves beyond an abstract idea.
The first part of example 23 involved a graphics issue. The software in this claim would move text from an obscured part of a window to a visible part of a window. The USPTO said this example counts because it's not a mathematical concept. It's also not something the human brain could do on its own. The software deals with solving a specific interface problem.
The second part of example 23 also talks about graphic interface. In this case, the software contains an algorithm. It is also built to scale text in user interfaces. Because the software solves a computer problem, it is patentable.
Example 25 is based on Diamond V. Diehr, a 1981 Supreme Court case. In the example, the software informs a computer how to do a real-world function. The software helps the computer find the temperature of the mold, among other things. The components of the software alone would not be patentable. But together, they are more than "abstract."
Example 25 also talks about the variables of a real-world process that software regulates. Creating or improving a process with software make it eligible for a patent.
This last example deals with U.S. Patent no. 5,230,052. This example involves exchanging information between two computers. In it, the software code is in a remote location. This is another example that creates something beyond the "abstract."
Thanks to the USPTO's Updates, better guidelines are in place regarding software patent eligibility, including:
- Improving existing technology.
- Improving how a computer works.
- Transforming something into a new state.
Three 2016 Cases that Gave New Life to Software Patents
The US Supreme Court had a major blow they dealt in 2014 to software patents. In the case of Alice Corp v. CLS Bank, there was a 9-0 ruling where the justices decided adding computer language that sounds fancy to parts of technology and business, which are otherwise ordinary, doesn't warrant a patent. Since that case, there have been hundreds of patents that district court judges have invalidated under Section 101, according to the US patent laws. They've found that they're just abstract ideas that didn't originally deserve a patent.
Most of the software patents weren't able to pass the general test the Supreme Court outlined. At the start of 2016, the top patent court in the nation listened to many appeals of computer patents that the Alice precedent challenged. The sole case where the Federal Circuit panel ruled in the software patent holder's favor was DRR Holdings v. Hotels.com. This ruling didn't mean every software patent wouldn't be approved, but it wasn't clear what the patent needed in order to survive.
DRR Holdings left a small target for patent owners to aim for. The judges for the US Court of Appeals for the Federal Circuit found three additional cases where they thought the software patents weren't correctly validated. This gave a break in the cases, as it used to be just one exception to the rule that turned into three large ones. This gave hope to patent owners that they might have their cases approved as well.
Enfish LLC v. Microsoft
Enfish Corporation was founded in 1993 in California by a previous Gemstar executive, who was looking for a smarter way to sort and track files, e-mails, and other data. In 2000, Enfish founder Louise Wannier was featured in the Los Angeles Times, and the business had 45 employees plus $20 million in capital. Even with that, it wasn't profitable. The company had a desktop search tool and other products that had good reviews in PC World, and that resulted in more than 200,000 users downloading them.
This still wasn't enough, and Enfish went out of business in 2005. The patents for Enfish continued to live in. In 2012, Wannier established Enflish LLC and sued a few large software companies, including Sage Software, Microsoft, Fiserv and Jack Henry & Associations, and Inuit. The lawsuit stated that Microsoft infringed two of their patents with their .NET Framework.
Enfish said they built a new kind of database that was self-referential and had a priority date of 1995. However, the district court didn't agree and claimed a table was just a table. Using terms such as "indexing" and "non-contiguous memory" wasn't enough to save the Enfish patents.
In 2016, a Federal Circuit panel ended up reversing the first judge. He stated that software improvements weren't "inherently abstract." The Alice and Bilski cases were for procedures where computers were simply used as a tool. The cases did not rule out the patent on a certain asserted improvement for computer capabilities. All of the five patent claims became patent-eligible again, and the case got sent over to the lower court. A new trial is scheduled for 2018.
McRO v. Bandai Namco Games America
McRO, or Planet Blue, was founded by Maury Rosenfield in 1988, a visual effects and computer graphics designer who worked for stars such as Max Headroom and on shows such as "Star Trek: The Next Generation" and "Pee Wee's Playhouse." His company was hired for several video game businesses to work on lip-synchronization and animation projects, but there was a falling out at some point. In 2012, Planet Blue sued over a dozen large video game companies, including Sega, Disney, and Sony.
Some of these companies were clients of Rosenfield before he filed the lawsuits. The complaints said the businesses infringed two of his patents related to a way he animated lip-syncing characters. The judge didn't rule in his favor, saying while he invented it, they were abstract ideas, so his patents were invalid. The patents would've come before any lip synchronization techniques that used a morph target approach that was rules-based. Many people watched this case, as Rosenfield was known as a big innovator in his field.
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