Updated November 27, 2020:

Why Is a Software Patent Search Important?

A software patent search helps businesses and individuals figure out what kind of software already exists. If you've developed software or have a software idea, a software patent search tells you what similar ideas are out there. When you want to patent your software, the search helps you figure out if your software is unique enough for a patent.

A software patent search is a legal, business, and personal tool. It's a way to get a picture of the software market. You can check on the software patents that certain businesses hold and find examples to help you write a better software patent application.

Patenting Software

In the United States, you can get a patent for your software. Most software patents are utility patents. To be eligible for this type of patent, your software must have the following characteristics:

  • It must be new and original.
  • It must be non-obvious.
  • It must work with a machine.

The third point, which deals with machines, separates software that works on a computer from "business methods," which happen inside your head. The software getting patented has to interact with a machine in a unique, non-obvious way to receive a patent.

The code of your software is already protected under copyright law. What the patent protects is the idea itself. The math and the algorithms in the software don't qualify for a patent on their own.

Under patent protection, you have a "legal monopoly" over the software you patent. This means that only you can do the following:

  • Sell the software
  • Import the software
  • Use the software
  • Manufacture the software

Others can do these things with your software only with your permission. You typically permit with a software license. This defines the terms of how someone else can use your software and for how long.

Prior Art

You perform a software patent search to find prior art. Prior art, in this case, is software with similarities to yours. Your prior art search will extend beyond searching software patents, but patents are a good place to start.

When you search for prior art, you will find software that's similar to yours in many ways. When you know how other software is similar, you then know exactly how yours is different. This is how you focus on the unique aspects of your software in your patent application.

A prior art search also tells you if your idea is patentable at all. If the prior art search turns up patents that cover all the unique parts of your software, you probably won't get a patent for it. Knowing this will save you the time and money it takes to apply for a patent.

Software Patent Search Tools

Many patent search tools exist for businesses and individuals to use. These tools range from free or inexpensive to very expensive. When choosing the right search tool for your software patent search, the price isn't always an indicator of quality. You don't want to spend too much on a search database that isn't up to date.

When choosing a database search tool, check these things:

  • Does it access all the patents you need to see (for instance, United States Patent and Trademark Office (USPTO) and European Patent Office (EPO) databases?
  • How does it filter your results?
  • How does the search tool conduct its search?
  • Does it limit the way you have to search (for instance, can you use a Boolean search)?
  • Can you export your data?

Free or low-cost search tools will provide you with comparable and sometimes better results than expensive search software. The quality of the search depends on how you conduct it and how thorough you are. Free and low-cost search tools may come with drawbacks you should keep in mind:

  • No help number or email to contact with problems
  • No export data feature (which you can get around by using another website)
  • You need to have a more in-depth understanding of how to conduct a patent search

If you need an in-depth patent search, hiring an intellectual property (IP) professional will probably give you better results than conducting incomplete searches on your own.

Choosing a Software Patent Search Database

You have lots of choices when choosing a patent search database. Deciding on a database depends on several things:

  • How you use it: The interface you use to search has to be helpful. Most beginners will need to use a Boolean search. If you're a professional, also look for a database with a command-line search, like PatBase.
  • What it covers: United States and UP/EP/WO searches are covered by most databases you'll use. But Asian language patents might not be in the database. If you need to look at patents from China, Japan, or Korea, try Orbit and WIPS.
  • Whether you can export data: Sometimes when you get a lot of data, you want to export it to your computer and analyze it there. A lot of databases will send you an email link, which isn't very fast or user-friendly when you need to export a lot of material. For a fast and well-formatted export, try Thomson Innovation by TR.
  • The database's speed: Slow databases can become a nightmare by slowing down your search. If it takes one second to display each result, then searching for 2,500 results will be very slow. You want a database with powerful servers or with servers that are in your area.
  • The display: Think about aspects of the display that might either help you or slow you down. For example, if you're searching for something mechanical, then display results that include images will help you. Highlighter tools are good for other kinds of searches, such as chemistry.

Start with Orbit, Thomson Innovation, or PatBase if you aren't sure which features you need.

Software Patent Search Tools

If you are not an expert in the intellectual property (IP) industry, start your search with these key resources:

  • Patexia Patent Database: contains more than 4 million U.S. patents dating to 1976, 3 million of which are from the past two decades
  • The United States Patent and Trademark Office (USPTO): provides extensive patent information to the public
  • World Intellectual Property Organization (WIPO): part of the United Nations and manages international IP and maintains a global patent search tool and other resources
  • European Patent Office (EPO): has a searchable database of more than 70 million international patents dating to 1836 (Espacenet)
  • Free Patents Online: provides efficient access to full PDF documents of patent applications with hyperlinks for easy navigation

Additional resources that may assist in your search include:

  • Acclaim IP — A paid patent search tool that focuses on helping businesses and patent lawyers. The data you receive helps you figure out what your competition is doing. It also tells you which patents belong to which competitors.
  • SPI Data — The Software Patent Institute's database. This database exists within IP.com's Prior Art Database. You can download the information you find.
  • IP Street — A way to search entire patent documents. The program uses patent claims to give you a list of patents that are similar to what you're searching for.
  • MaxVal IP Free Patent Tools — These free tools are geared toward automating processes that take humans a long time to complete. Some of these include paralegal work. The list of free tools is long, and contains assets like the Patent Term Estimator and Has This Patent Been Litigated?
  • MaxVal IP Paid Tools — These paid tools use offshore paralegals, who monitor the Public Access to Court Electronic Records (PACER) and PAIR (the USPTO's database of patent applications). The paralegals also prepare reports for you.
  • Sumobrain.com — A free patent search website. You can use Boolean searches or field searches. This site also allows you to export data.
  • Google Patents — A free patent search that uses Google's powerful algorithms. It includes a tool for finding prior art.
  • PatentBuddy.com — A free tool for analyzing and pulling data from patents. The database is at least as current as most paid tools, and more current than some.
  • Petapator.com — A Google Chrome extension that gives you lots of prior art to look through. It organizes the prior art in a way that lets you scan it quickly or go in-depth.
  • PatSeer — A hybrid engine with diverse search options and more full-text authority coverage than most other databases.
  • Relecura — An analytics program designed for IP, technology developers, and inventors.

IP professionals who are delivering results to clients or conducting prior art searches for the purpose of patent applications may want to invest in more robust subscription services with access to maps, graphics, and additional resources.

Issues With Software Patent Searches

The current U.S. patent system has issues that make patenting software difficult. Getting a software patent takes a long time because of the number of applications in existence. Plus, finding all the prior art that might impact your software invention is difficult or impossible.

The problem is, if you don't find all the prior art, you're at risk of being sued. Someone else might decide your software infringes on their software patent. Even if it doesn't, proving that in court is very costly.

Patents use a classification system for organization, but fitting software into the classification system is difficult. Right now, the system doesn't work very well to sort the software patents into a searchable database. Also, the title and abstract of a software patent might not contain everything that the software can be used for. This creates a big software patent search problem.

New Big Data technology can handle the amount of information in software patents. If searching software patent classifications doesn't work, then you need to use related terms and keywords to search a large database. Companies like Apixio and Gravity provide Big Data solutions.

Some of the programs and software available for searching patents address these issues. But searching the USPTO database on your own for software patents is still difficult. That's why using external software is necessary when you're doing a software patent search.

However, even though a large number of software patents exist, most of them aren't relevant to the search you'll be conducting. For instance, you don't have to look at expired patents (most expire after 20 years).

Companies don't usually have to review all the patents their competitors hold. Licensing agreements can take care of some problems with infringement. Companies have portfolios of patents and usually license groups of software together.

Being sued for patent infringement costs a lot. But so does suing someone else for it. Usually, large companies are the ones with the resources to start these lawsuits. Though, if the risks of being sued are actually low, companies might not perform this kind of comprehensive software patent search.

Software Patents and the Courts

All levels of courts, including the Supreme Court, have ruled on software patents. These decisions create complex precedents about what kind of software can receive a patent. Not all software patent applications are successful. Sometimes court cases can invalidate existing software patents.

The Alice Corp. case (usually shortened to "Alice") was a 2014 Supreme Court case about software patents. The decision had a huge impact on software patents. The Supreme Court did not actually say what qualifies as a software patent, but it did rule on what does not qualify.

In this case, Alice Corp. wanted to patent software it used to do business. It argued that the software was patentable because it used a computer to run. The Supreme Court ruled against Alice Corp. using the following points:

  • The software was an "abstract idea," which can't be patented
  • Software that does something other people or other software already does can't be patented
  • The software needs to have something in it that makes it a "new invention"
  • Using a computer to do something people previously did by analog means is not a new invention

To qualify for a patent, the Supreme Court said that software has to do the following:

  • Achieve a goal that people haven't attained before
  • Use totally new computer performance
  • Improve how computer hardware works

Though many software developers and business people find this result murky and unsatisfying, it has good points. For one thing, patent trolls (people who try to patent inventions that don't belong to them so they can sue people who use them) will have a much harder time patenting software. The stricter rules about patenting software now eliminate the kind of broad software for "business methods" that patent trolls like.

Unfortunately, the Alice decision also means that startups without a lot of funding will have a harder time getting patents for their software. It could also invalidate more software patents if these companies go to court for any reason.

Creating a Software Patent Application

To create a software patent application, you must describe your software in a certain way. You start with the broad scope, and then you get specific with the details of what it does.

  • How is the software's function unique?
  • How does it deal with human error?
  • How does it solve problems?
  • Why is this method of problem-solving better or more novel than other methods?

What you're patenting is the unique aspect of your software. That's where your focus should lie in your patent application.

When writing the application, you want to discuss your idea from several angles:

  • How it works for the user
  • How it works from a system standpoint
  • How it works with the computer

Your software patent search will show you successful software patents. You can look at these successful patents for a more detailed view of how to write your patent application. Because of the somewhat murky definition of what qualifies as a software patent, how you write your application has a big impact on whether you get your patent.

Do You Need a Software Patent?

Before you go through the time-consuming and expensive application process, decide if you need a software patent. (Not everyone is in favor of software being patentable in the first place.)

Do you intend to use your software? If you created an app for fun, why would you apply for a patent? On the other hand, if you want to build a business around your app, you might decide a patent is necessary. If you intend to sell the technology, a patent might make it easier or more lucrative sale.

Imagine you created an app. Obtaining a patent can take between two and five years. If your app is already in stores, then you have to wait a year after you released it to apply for a patent. Technology changes quickly. Will you need the patent for the app after upwards of five years? Can you wait five years before selling your app?

The USPTO keeps pending patent applications confidential. This means that a software patent isn't always the best way to protect your invention from someone else using it. Imagine if you started developing software after someone applied for a patent for similar software. You might finish developing your software and already be distributing it when that other person's patent application gets approved. Then you'd find out you can't sell something you thought you invented.

File a Provisional Application

A provisional application gives you a year to create your full patent application. You can file this provisional application with the USPTO when you release your app. Then you have a year of the app being on the market to create your full patent application.

If you need help with software patent searches, 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, Menlo Ventures, and Airbnb.