Interested in learning how to patent software in the US? Here are some guidelines to follow when you’re looking to secure a patent. First, you’ll need to decide what sort of subject matter you’re trying to protect. This article will cover three of the main categories you can pursue: Abstract idea, Functional data, and improvements to an underlying computing device. In addition, you’ll learn about the three-step formula that you’ll need to follow in order to get your software patent approved.
Requirements For Software Patenting In The United States
Software patents are essential for many software companies. They invest valuable capital in software technologies, and want to prevent competitors from copying their work. Patents are an essential business tool, and the US patent office and courts continue to find that software can be patented.
While some user interface designs can be protected as design patents, most software patents are filed as utility patent applications. Software patents follow the same basic forms as normal utility patents. After a review process, the United States Patent and Trademark Office awards patents to individuals. A patent grants the rights to exclude other people from making, using, and selling the patented software for 20 years.
There are several requirements to get a software patent in the United States. Among these are that the software must be new, unique, and non-obvious, and meet certain patent eligibility criteria for you to get your patent approved by the US Patent and Trademark Office (USPTO).
As with any other patentable subject matter, the software must be a new and useful invention. The claims must also be sufficiently novel and not obvious to the person with the usual skill in the art. However, it is sometimes difficult to determine whether a new software invention is a combination of existing algorithms, or whether software that relies on open-source AI algorithms is patentable. This is where a skilled patent practitioner can come in handy.
Challenges To Software Patenting
Until recently, the validity of software patents is rarely challenged in the US. Before Alice was decided, software patents were challenged in the same way other patents are challenged, mainly based on obviousness over the prior art. After Alice, however, software patents began to be challenged routinely as ineligible subject matter, and, in many cases, during the early stages of the litigation. Most Alice-based challenges were made in early dispositive motions, which decide a claim without a full trial.
For software to be eligible for a patent, it must solve a problem that is “necessarily rooted” in computer technology and the description for the application should focus on how the improvement is achieved. Additionally, the claims must be sufficiently targeted, so as not to preempt every possible application of the idea, and still broadly protect your particular application to cover infringers.
Software inventions that are solely intended to automate tasks, provide generic features, or simply apply the computer to known tasks are not patentable. In addition, abstract ideas and scientific theorems are not patentable, and software inventions that do not have a novel/non-obvious function may not be eligible. To obtain a software patent, it is best to hire a patent attorney or an intellectual property lawyer who specializes in software inventions.
Even in this challenging environment, many software patents have been granted and also survived validity challenges, and if you write a software patent application carefully, the odds of it being granted are much greater than for other technology-based patents. The key to a software patent is showing that the software improves the functionality of the computer, requires fewer resources, or solves a computing challenge in a new and unconventional way.
Strategy for Drafting Software Patent Application
In general, we recommend a patent application that is rich in detail and that focuses on the utility of the invention and how it practically and efficiently solved problems facing the inventors. For example, the description can discuss in depth how the technology improves the performance of the computer system it runs on, or how it improves the quality/performance of the resulting output. In general, the more details on the algorithm the better, along with explanations that show how performance is enhanced.
Avoid Being Classified as an Abstract Idea
An abstract idea is a legal fiction that has little to do with the ordinary understanding of abstractness. Patentees and patent attorneys disagree as to whether a certain invention qualifies as an abstract idea.
The new guidance from the USPTO provides more clarity on the definition of abstract ideas under Section 101. Companies have long struggled to obtain patent protection on ideas that have no tangible application. However, the USPTO recently released guidance on computer-related inventions that helps clarify this gray area. As long as the USPTO can keep this guidance updated, it will become easier to obtain patent protection for your abstract ideas. That’s good news for both parties.
https://www.uspto.gov/sites/default/files/documents/MWRO_101_Eligibility_OPLA.pdf
The first step in ensuring that your software is patent-eligible is examining its subject matter. According to step 2A, if you have an idea that isn’t abstract, you might be able to bypass this hurdle. If not, there are additional elements to consider before determining whether your software is patent-eligible.
Often, a software program is a mathematical formula that caused it to be placed in the abstract idea bin. But in some cases, it is more than just a mathematical formula. For example, a software program that converts binary-coded decimal numbers into true binary numbers in a way that speeds up computer performance can be transformed into patent-eligible subject matter.
Remain inside Patent-Eligible Subject Matter Boundary
Even if your invention is placed into the abstract idea bin, all is not lost. You can use revised step 2A analysis to incorporate additional elements that integrate the “judicial exception” of patentability into a practical application. This is where details in the description becomes important.
Your description should focus on the following:
- Improvement to the functioning of a computer or to any other technology or technical field per MPEP 2106.04d1 and 2106.05a
- Applying the exception with, or by use of, a particular machine per MPEP 206.05b
- Effection a transformation or reduction of a particular article to a different state or thing per MPEP 2106.05c
- Applying or using the exception in a meaningful way per MPEP 2106.05e
Despite the Alice-inspired uncertainty, the specter still haunts software patent applicants. In the wake of Alice Corp. v. CLS Bank International, the USPTO issued complicated guidelines for examiners that make overcoming subject matter eligibility rejections in software patent applications difficult. Even after four years of Alice, the patent landscape for software remains unclear and many stakeholders are scrambling to apply the new rules.
Focus on Improvements To Underlying Computer
An important question to ask before filing for a patent application is whether improvements to the underlying computing device are novel enough to be patented. The courts have held that merely running a conventional task on a computer would result in abstract ideas, not tangible improvements. However, specific improvements to a computer’s hardware, software, and methods to provide computerized processing can be patentable.
Moreover, claims should describe a unique hardware configuration, not abstract ideas. The claims must relate to the computer’s underlying technology, not to general finance or commerce goals that may lead to a finding of abstract ideas. The software patent application should be described as a technical breakthrough that improves processing efficiency, accuracy, or combinations thereof. For instance, an improved way to track movement in an airplane can be patented as an improvement to GPS and the claims should be particularized as to how this improvement is achieved.
The description should describe improvements to the underlying computing device. The best way to do this is to clearly define the processes and methods used in the invention. By identifying these processes and methods, an applicant can avoid classifying the invention as an abstract idea that is implemented on a computer.
Software Patent Claim Strategy
A claim that is patent-eligible can be cover a process, machine, manufacture, composition of matter, or design. However, it cannot be directed at laws of nature, natural phenomena, or abstract ideas.
If your software invention involves “abstract ideas,” the claims must be sufficiently detailed to transform the idea into a patent-eligible application. To qualify for patent protection, your idea must solve a problem “necessarily rooted” in computer technology, and the claimed elements must not preempt every possible application of the idea. As with any patent application, the claims should also be concise.
For each independent claim, it is important to use the right terminology. If a particular claim references another, it should be grouped with that claim. Similarly, if the same claim has multiple dependent claims, the claim should be grouped with the referenced claim. If more than one dependent claim refers to another, there should be line indentation between each claim. Adding more claims may not be worth the extra space, but it will increase the likelihood that some claims will be allowed.
Support Functional Claims with Code Structures or Algorithms that perform the Function
When patenting software in the US, you need to consider the role of functional claiming which claims the results and not the structure that supplies the results. Practitioners like functional claiming as it provides broad coverage and greater flexibility in describing the desired result of a software product without having to tie it to a particular software solution.
The USPTO also gives more scrutiny to applications involving functional claims as well as patent-eligible subject matter. For example, the PTO has proposed that applicants prove the support for their functional claims with the following:
a. require applicants to explain or identify the corresponding support in the written description for each claim, or claim limitation, upon the original presentation of the claim(s), and/or upon any subsequent amendment to the claim(s) (including requiring a showing of express or inherent support in the written description for negative claim limitations)
b. require applicants to explain or identify the corresponding support for each claim, or claim limitation, in the written description of every prior-filed application for which the benefit of an earlier filing date is sought, under, e.g., 35 U.S.C. 119, 120, 121, or 365
c. require applicants to explain or identify the corresponding support for each claim, or claim limitation, in the written description of every prior-filed application for which the benefit of an earlier filing date is sought, under, e.g., 35 U.S.C. 119, 120, 121, or 365 (including requiring such support whenever a benefit or priority claim is presented, including upon the filing of a petition for a delayed benefit or priority claim and upon the filing of a request for a certificate of correction to add a benefit or priority claim)
d. make clear that claims must find clear support and antecedent basis in the written description by replacing the “or” in 37 CFR 1.75(d)(1) with an “and” as follows: “The claim or claims must conform to the invention as set forth in the remainder of the specification, and the terms and phrases used in the claims must find clear support or and antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description”
e. require applicants to provide detailed analysis showing support for genus or Markush claims, and require applicants to identify each claim limitation that is a genus, and explain or identify the corresponding support in the written description for each species encompassed in the claimed genus
f. require applicants to describe what subject matter is new in continuing applications ( e.g., continuation, continuation-in-part, and divisional applications) to explain or identify subject matter that has been added, deleted, or changed in the disclosure of the application, as compared to the parent application(s)
In today’s environment, functional claims are often expensive to prosecute and defend, and are not appropriate for all software products. Here are a few guidelines that will help you prepare a functional claim. You will be able to avoid common pitfalls that often arise when filing a software patent application.
Cost Of Obtaining A Software Patent
There are many reasons why you should consider acquiring a software patent. It protects your idea from unauthorized use by competitors and positions your company for greater financial performance. However, building a portfolio of software patents can be a big investment.
Remember that a patent application is an investment in an asset that is valued by venture capital investors. Based on our experience, an investor should not dispute the value of $100,000-$150,000 for a pending patent application. Granted patents are worth much more. For example, according to Forbes:
Kodak, the bankrupt company that invented the digital camera, sold its portfolio of 1,100 digital photography-related patents to a dozen licensees, including Apple , Microsoft , and Google , for $525 million. Last spring, Google bought Motorola Mobility , with its 17,000 patents, for $12.5 billion, to protect its Android mobile operating systems from rivals. Also last year, Microsoft acquired 800 patents from AOL for more than $1 billion, only to turn around and sell 70% of them to Facebook for $550 million in cash.
The process begins by filing a provisional application, and attorneys charge as little as $1000 to file a provisional application. You may be able to save money by drafting the application yourself. However, as the provisional is the foundation of patent protection for your software invention over the next 20 years, we recommend that you have the application reviewed by a patent attorney before you file a provisional application.
In one year after the provisional filing, you will convert the provisional application into a utility application and will need to consider international filings as wel. The total cost of a software patent in the USA varies greatly, but it is typically between $20,000 and $60,000. This fee will include preparation and prosecution, which will include everything necessary to obtain “patent pending” status and issue the patent. Preparation includes understanding your invention, drafting the specification and claims, and getting illustrations done. It will also include other odds and ends required to file with the US Patent and Trademark Office. This is largely due to the fact that software patents take many years to issue, with maintenance fees every four years, making it essential to budget for a substantial amount of time.
The costs of obtaining a software patent in the USA depend on your level of expertise and the type of application you file. The USPTO’s website contains information about the various types of patent applications and fees. If you prefer to avoid paying fees, you can complete the entire process yourself or use patenting software to help you. You can also use a combination of patent attorney and self-help to optimize cost. If you have any questions, contact us and we can recommend a wide range of solutions to fit your budget.
Conclusion
Software and computer technology are two industries that are booming. New, innovative software is changing how we communicate, store information, and conduct business. The inventions that people create in these fields can become valuable assets for individuals and companies.
If you have an innovative idea for a new software program, you should consult a patent attorney. As the technology behind high-tech products can move quickly, and it is important to ensure that you get timely protection and that you are the sole owner of the patented technology.
Patent attorneys can help you identify whether your software is patent-eligible subject matter. A lawyer with experience in software patents is a must for a successful US software patent application. A specialist software patent attorney will help you to describe your invention in a direction that passes the USPTO’s software patent guidance rather than applying an approach for non-software inventions. This allows your patent attorney to write the best patent application for you, leaving no stone unturned.
