Software Patents

Everything You Need To Know to Protect and Patent Software Inventions and Applications

Can you patent software? Certainly. It is not so much a question of whether you can patent software, but whether your specific software invention falls within a category where patentability may be more difficult than usual – but even then, there’s a chance we can get the patent application allowed.
software patent

First, a company should understand that an allowed software patent is going to provide broader and better protection over a software invention than a copyright. A copyright will typically just protect the specific code, but changes to the code may very well be unprotected – unlike software patents that protect the concept (e.g., any variation of code).

Main Considerations and Strategies Before Filing a Software Patent Application

1. Have a prior art search performed.

While not required, a prior art search is almost always recommended 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, which can take 2-4 years, assuming no expedited Track One is filed (https://www.uspto.gov/patents/initiatives/usptos-prioritized-patent-examination-program).

Nonetheless, there may be reasons for which a prior art search is unnecessary, and the client can save financial resources:

  • The company/inventor is at the forefront of the technical field and is confident in their knowledge of the prior art.
  • The company/inventor has performed a prior art search previously.
  • In certain situations, the value of having the patent is simply too valuable and worth the risk regardless of what the search results show. This may apply for startup companies in particular, but also for established companies that believe in their new product.

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.

2. Determine whether the software invention is directed to unpatentable subject matter under 35 USC 101 in the post-Alice world (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (Supreme Court, 2014)).

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).

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. 

Parts of Software Inventions to Focus On If Alice-101 Rejections are a Concern

The pie charts in the below diagram demonstrate patentable subject matter in green while white represents unpatentable subject matter under 35 USC 101. Each graphic represents an invention that should be at least conceptually patentable under 35 USC 101.

Put simply, software inventions that are either wholly or partially directed to one or more of the following concepts provide a good indication that the software 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)).

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 far right pie charts are also likely patentable.

Software Patent Examples and Strategies

When a small piece of the software invention is identified as being directed to some technical improvement (as shown in the rightmost pie chart), work with a skilled software patent attorney to carefully strategize your application.

1. When only a portion of the invention is patentable:

If only a small portion of the invention is likely patentable, then, in some scenarios, it may not be worthwhile to describe the entire invention in the patent application because most of which is unpatentable.  Doing so may unduly influence the Examiner against patentability because their interpretation of the claims may be off-base if the application 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. This is but one strategy, and there is of course great reason to make sure the full invention is described to satisfy other patent laws, to safeguard the Applicant’s filing date, to act as a defensive filing measure, etc.

2. When you want the entire software application patentable:

If you’re interested in having the entire invention protected, then perhaps one strategy is to separate the “whole” invention into a different 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.

Put simply, software inventions that 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, working with an intellectual property attorney to flesh out the technical improvements when preparing the patent application will ensure that the patentable details are clearly and inextricably explained to the USPTO.

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