Software Patent Law

In the U.S., software patent law is key to understanding the importance of patenting various software products, methods, and applications. In 1996, the United States Patent and Trademark Office (USPTO) adopted what’s called the “Final Computer Related Examination Guidelines.” Such guidelines have changed over the years to keep up with newly identified issues, including court decisions made by both the United States Supreme Court and the U.S. Federal Circuit Court of Appeals. These guidelines assist patent examiners when reviewing hardware and software-type inventions, while also helping examiners determine whether or not the software invention is in fact patentable.

Two Elements to Patent Software

Two main elements that must exist when determining if software can be patented include that the software must be unique, and it must be tied to a machine.

Generally, to be patentable, an invention must be new, non-obvious, and useful. Uniqueness in the software industry is viewed similarly to the new and non-obvious factors. Therefore, the software must be distinct and separate from any prior software invention out there.

The second element of being tied to a machine simply means that the software must protect or be useful to some sort of computerized process. It can’t be software tied to a mere business method. If the business method is a method done in your head, then the software for it cannot be patented. There must be an actual, tangible machine that the software will be used for.

Software Patent Search

Inventors seeking software patent protection should first conduct a patent search. This will help the inventor identify whether or not his or her software invention meets the criteria to be patentable.

• The most important thing to keep in mind when conducting this search is that a multi-phase search should be done. This will allow you to identify what inventions are not only identical (if any), but what inventions are similar to yours, and could pose a potential problem for you after you submit your patent application.

• After you’ve conducted several searches, you should draft an assessment of what you identified in your search results. Be sure to detail where everything was located, the year in which the similar invention was patented, what those prior inventions do, etc. This will also help you draft a comprehensive patent application.

Downside of Software Patents

Software patents have always been highly controversial, particularly due to the threat on the freedom of speech protection given to us by the First Amendment.

For example, in September 2016, the U.S. Court of Appeals for the Federal Circuit issued a ruling finding that 3 companies that used prior issued patents were not at fault because the patent holder’s patent application did not describe a patentable invention. Therefore, even though the patent holder had protection over such patents, the Court determined that there was no infringement on the part of these other entities because the product should not have been awarded a patent in the first place. The Judge in this case relied heavily on a prior suit, which specifically indicated that software should not be patentable.

Regarding the issue of threatening free speech, software patents have been controversial since the beginning primarily due to the fact that our First Amendment rights should protect fair use of things, including software. The idea also stems from the Patent Act (Section 101), which indicates that abstract ideas simply cannot be patented in the first place.

Simply put, it is of the belief that our public use of the Internet should be highly protected, and not face governmental intrusion. Software is generally looked at as a form of language, and according to the judge in the above-mentioned ruling, intellectual property protection should be limited to copyright, which includes musical pieces, artwork, books, and articles. Patenting software only allows those patent holders to reap financial gains at the expense of others who want to use that piece of software.

If you need help learning more about software patents, or if you need assistance applying for a 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, Stripe, and Twilio.