Using Software Patents to Protect Software Applications
While copyrights are available to protect the specific programming code in a chosen programming language, software patents protect the overarching idea, or, better put, the general application of that idea. In most situations, a software patent application that meets the standards for allowability is going to provide broader and better protection over a software invention than a copyright. If financial resources are not an issue and the software code is ever published, then consideration should be given to supplementing the software patent application with a copyright registration, just to be safe. As copyrights are far less expensive than a software patent application, there can be little downside to filing for the copyright registration.
Below should provide a nice introduction regarding the main considerations a company or individual should consider when seeking patent protection over software.
Main considerations before filing a software patent application:
- As always, available prior art that may cause the patent Examiner at the USPTO (United States Patent and Trademark Office) to reject the patent application’s inventive features;
- and Whether the software invention is directed to unpatentable subject matter under 35 USC 101 in the post-Alice (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (Supreme Court, 2014)) world.
Should you have a Prior Art Search Performed?
While not required, a prior art search is seldom not recommended only because if the results indicate that chances of allowability are low, then there is no reason to move forward with a costly patent application process that extends anywhere from 2-4 years assuming no expedited Track One (see https://www.uspto.gov/patent/initiatives/usptos-prioritized-patent-examination-program) request is submitted. With that said, there may be reasons for which a prior art search is unnecessary and the client can save financial resources.
If the Applicant/Company/Inventor is at the forefront of the technical field, has performed a search previously, or is otherwise confident that the application will be allowed, then perhaps the search can be avoided. Also, start-up companies seeking investor funding and/or are dedicating significant resources to the product, may find that the patent is critical to their future and is worth the risk regardless of what the prior art indicates. In any case, a detailed and robust patent application that covers all available embodiments can go a long way in advancing the patent application to allowability.
Does your Software Application Trigger any Unpatentability Concerns
under 35 USC 101 (Alice)?
Specific software inventions that should certainly raise eyebrows and cause legitimate
concerns in terms of patentability include:
- Mathematical concepts (e.g., algorithms, formulas, and calculations);
- Methods of organizing human activity (e.g., programming human action such as economic principles and transactions into a general purpose computer); and
- Mental processes (e.g., collecting and comparing information, and collecting, analyzing, and displaying results).
Conversely, software inventions that are either wholly or partially directed to one or more of the following concepts provide a good indication that the patent application may be allowed:
- The solution is “necessarily rooted in computer technology in order to overcome a problem specifically rising in the realm of computer networks” or other technical problem involved with the computer (DDR Holdings, LLC v. Hotels.com, L..P., 773 F.3d 1245 (Fed. Cir. 2014)).
- A specific improvement to the way computer’s operate (Enfish, LLC v. Microsoft, 822 F.3d 1327 (Fed. Cir. 2016)). action such as economic principles and transactions into a general purpose computer); and
- “Specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art.” (Trading Technologies International, Inc., v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)).
- An invention that is directed to a “specific method for navigating through three-dimensional electronic spreadsheets.” (Data Engine Technologies LLC, v. Google LLC, No. 2017-1135 (Fed. Cir. 2018)).
Put simply, software inventionsthat are rooted in computer technology – which can include GUI (graphical user interface) improvements – are more likely to be patentable than if such features are lacking. Whatever the software invention is, care should be taken to flesh out the technical improvements when preparing the patent application so that the patentable details are clearly and inextricably explained to the USPTO.
Can we Identify a Part of the Software Application as Patentable?
Just because an entire software invention may not satisfy the Alice guidelines under 35 USC 101, does not mean there isn’t a fraction or part of the software implementation that can be protected. See, for simplicity purposes, the pie charts in the below diagram in which green represents patentable subject matter and white represents unpatentable subject matter under 35 USC 101:
(Each of the above examples are conceptually patentable under 35 USC 101).
While an Applicant ideally wants their software invention to be in the left-most pie chart that shows the entire invention directed to some technical improvement, the software inventions in the middle and right-most pie charts are also likely patentable. When a small piece of the software invention is identified as being directed to some technical improvement as shown in the right-most pie chart, then how the application is crafted should be carefully strategized
For example, if only a small portion of the invention is likely patentable, then is it worthwhile describing the entire invention – most of which is unpatentable – in the patent application? Doing so may unduly influence the Examiner against patentability because 80+ percent of the features, when the Examiner reviews the patent application, is unpatentable. While the Examiner is supposed to examine the claims of the patent application in determining patentability, it is not a stretch to assume the Examiner’s interpretation of the claims is off-base if the lens (the specification and drawings) through which the claims are read is replete with unpatentable concepts
The better strategy may be to recognize the unpatentable features and focus the application on the patentable ones to increase the odds that the invention is properly understood, and thereby successfully protect a portion of the software invention. Put differently, realistically sacrificing a portion of the invention may help protect the patentable features. If the client-Applicant is interested in having the entire invention protected, then perhaps one strategy is to separate the “whole” invention into a separate application from the identified patentable subject matter, and then concurrently file the applications. This way, the portion of the invention that is believed to be patentable will be unaffected, or shielded, from the remaining unpatentable features. Of course, every situation is different and the options should be thoroughly discussed with the client-Applicant so an informed decision can be made.