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Analyzing Software Patents: Latest Software Patent Examples (2024)

How to Patent Software

Software is ubiquitous nowadays. Straight from managing street lights, all the way to maintaining the security of IoT devices, we use software everywhere in our daily lives. Patents are a big part of software. Most of us don’t know how to go about the process of patenting the software we build. While it is a bit complicated, this article will take you through each step involved in the process of getting a strong patent for a piece of software.

First, Is Software Patentable?

The answer to the question is YES. Patent protection for software, where recognized, is available for inventions that are new, useful, and non-obvious in any technology field. The criteria of patentability are established in national patent laws.

Patents can protect many types of computer software in the United States, including mobile apps and Software as a Service (SaaS apps). This was not always true. In the 1960s, conventional wisdom was that computer programs were generally not patentable. In the 1970s and 1980s, the Supreme Court addressed the issue three times. First, it concluded that most software was copyrightable and not patentable. Then the Supreme Court indicated that anything man-made under the sun qualifies for patent protection, provided it meets all other patent requirements under Sections 102, 103 and 112, among others. 

Most recently, the 2014 Alice decision changed the rules about what software was eligible. This ruling reiterated that patents should not be based upon a fundamental idea. It must also include an “inventive step.” Just because a task is implemented using a computer, it does not mean that the process is new. This made it more difficult to patent computer programs, and reduced the number “business method” software patents. These patents are still possible, but they are becoming more difficult to obtain. Software is currently patentable, provided it is not directed at an abstract idea without more.

Today, software patents can be obtained to protect a wide range of methods, processes, codes or programs. Software can be viewed as scripts, programs, or applications or simply any code that runs within a system, a game or social media application. Software patent can protect the software itself, as well as its library, user interface, and algorithm. In addition, a patent can cover any technological aspect that enables a computer to carry out an essential function. This is the main reason why many people turn to the patent law for protection. For example, Amazon’s one-click-to-buy button was patented in 1999 and is still the most popular software product in the world.

Patent laws do not generally treat software-related inventions the same as other new technology advances. This could be because of a lack or understanding of the nature of software innovations and the protection afforded under different IP rights. Therefore some software can be patented while others cannot. Examples of software that is not patentable include software on underlying economic practices, specific methods of organizing human activities, and mathematical relationships.

In contrast, software that improves upon computer functionality or software with technical features is patentable, particularly if it decreases the number of computer horsepower needed to carry out a particular task.

Software is one of the most important subjects to patent, but it is also an area of uncertainty in U.S. patent law. Proper preparation can help ensure strong software patent. To prepare effectively for the patenting process, it is crucial to carefully analyze current patent law and decide what might qualify as a patentable innovation. The process requires careful consideration of how to frame the invention in the claims.

Patent Classifications applicable to mobile app and software inventions

These patent classifications are –

  1. Design patents.
  2. Utility patents.

Software Design Patents

Design patents can be granted for novel ornamental features of software interface designs and can be used to protect Graphical User Interfaces (or GUIs in short).

GUIs can be graphical icons, animations and visual indicators, among others, that help users to understand the many features of the program.

Essential Requirements of Design Patent Protection of GUIs:

#1. New and Novel.

Common to all patents, design patents are only granted for designs that are new and not obvious versions of existing designs.

#2. Article of Manufacture Requirement.

Any man-made device that contains a picture, design, or other tangible material can be an article of manufacture.

Standalone, the GUI design is not an article of manufacture, but when it is displayed on a mobile device or computer, the GUI becomes an article of manufacture protectable by a design patent.

 #3. Ornamental Design.

The design patent protects ornamental aspects of the article of manufacture with functional features.

The design cannot be solely dictated by function, or utility aspects of the article.  As such, the ornamental aspects of the GUI must not be linked to its functionality.

If a particular design is needed for functionality, it will not satisfy the ornamental requirement as there would be dependence between them. In order to be patent-eligible, one must consider whether the designs are independent and not dependent on each other in order for them to be eligible for law protection.

If you want to protect the GUI’s functional aspects, a utility patent should be applied to provide protection for its functionality. Depending on the situation, you may be possible to apply for both design and utility patent applications for the same product.

Software Utility Patents

While design patent protection is available to protect ornamental aspects of the user interface, functional aspects should be protected through a utility patent.

A software utility patent covers algorithmic methods and processes and can be obtained by focusing on the following:

  1. Improvement to another technology or technical field;
  2. Improvement to the functioning of the computer itself;
  3. Effecting transformation or reduction of a particular article to a different state or thing;
  4. Adding a specific limitation other than what is well-understood, routine, and conventional in the field, or adding unconventional steps that confine the claim to a particularly useful application; or
  5. Exhibiting other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

In general, you need to teach others how the invention can be implemented.

This can be done through flowcharts, pseudo-code, timing charts, and state-transition charts, among others. Sometimes pseudo-code can be used to describe complex algorithms. Flowcharts are the most common way to do this, but screenshots illustrating the operation of the software can also be used.

If you want to protect the GUI’s functional aspects, a utility patent should be applied to provide protection for its functionality. Depending on the situation, you may be possible to apply for both design and utility patent applications for the same product.

Here’s an example of an utility patent.

To Patent or Not to Patent Your Software?

It is a crucial decision for inventors to decide whether or not you should seek a software license. This decision can have repercussions beyond software patenting.

Obtaining a patent may not be necessary in all cases.  For example, if you have a faster way of training your learning machine, this technology is all done in secret and no one knows about how you train your AI faster, then you should consider trade secret protection

A good analogy is KFC’s “blend of 11 herbs & spices”, which is the secret recipe used to make its Kentucky Fried Chicken.  It is one of the most recognizable trade secrets. People have been trying to find or duplicate this secret recipe for years without much proven success.

Trade secrets are things that have commercial value and are not generally known. They can also be subject to secrecy efforts and can be extremely valuable and last for almost indefinite time. Once a secret is revealed, it is no longer valuable.

In contrast, a patent is open to the public, and they are free to read and learn, but if they use the concepts in the patent, they need to take a license or obtain permission from you.  As software is a process, obtaining a patent for it will protect your invention. The results of your software and the functionalities it enables are the main ingredients for obtaining a patent. Even if software is simple and easy to copy, it will still benefit you to protect your work with a patent. If you have a new idea that isn’t obvious, a patent will protect it and give you control on how others use your idea, even if you decided to open-source the code.

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Benefits of Obtaining A Software Patent

In the software industry, the ability to protect an innovation with a patent is a vital tool for startups. Without the protection of a patent, smaller companies can’t compete with larger companies. Even startups with strong technical skills and a solid product idea may find it difficult to survive against big tech companies. Consequently, securing a patent is crucial. A software patent has many benefits and can be the difference between success and failure.

Software and web applications are valuable business assets that should be protected by tech companies using intellectual property rights laws such as patent protection as well as trademark protection.

Software developers often seek patent protection for the software’s process. Your software app may be patent eligible if it does more than just calculate, track data, or render a user interface. Also, the software invention must be original and not obvious.

But software patents cover more than just mobile apps. Software patents can cover a computer software program, a mobile device app, a web app, or software that is integrated into a larger system or a mechanical device.

While many founders do not consider patenting, you should look up the example of Phhhoto v Meta.  There are reasons why major software companies file patent applications to protect their inventions. Startups should remember that software patents are first and foremost business assets. While many businesses can benefit from a software patent, the patent system can also be used strategically to limit competitors. It may also be beneficial to cross-license your software with a competitor and gain access to their technology. In the end, a powerful patent portfolio can keep you out of patent infringement lawsuits and prevent retaliatory actions.

The Best Time To File For Software Patents

The right time to protect a software invention with patents can depend on several factors, including the stage of development of the software and the company’s business goals. Here are a few general guidelines to consider when determining the right time to file a patent application for a software invention:

  1. Before publicly disclosing or offering for sale: In order to be eligible for a patent, an invention must be novel and non-obvious. Once an invention is publicly disclosed or offered for sale, it is no longer eligible for a patent in most countries, including the United States. Therefore, it is generally advisable to file a patent application before publicly disclosing or offering for sale a software invention.
  2. Before competitors file for patents: If a company believes that its software invention is valuable and that it has potential competitors, it may want to file a patent application as soon as possible in order to secure patent rights before competitors do.
  3. When the company is ready to commercialize: Software inventions can be expensive to patent, so a company may want to wait until it is ready to commercialize the software before investing in a patent application.
  4. When the company is trying to raise funding: Patents can be valuable assets that can be used to attract investors, so a company may want to file a patent application when it is trying to raise funding.
  5. When the company is ready to license or sell the technology: Patents can be used to protect the company’s rights to a software invention and to generate revenue through licensing or sales.

It’s important to note that each case is different and the best time to file a patent application for a software invention will depend on the specific circumstances of the case. It’s always a good idea to consult with a patent attorney to discuss the best strategy for protecting a software invention.

Before You Apply For A Software Patent

Before applying for a software patent, you must be able to conduct a commercial viability assessment before you patent your software idea. If your software solves complex mathematical equations, then you need to know how to do it. It would be almost impossible to create software that is successful on the market without this knowledge.

Although a prototype is not necessary, it’s important to create flowcharts that describe the software’s functionality and then write a detailed description along with claims and drawings for your patent application.

The best way to approach it is to first develop a minimum viable product, or MVP, of your software. A MVP is a working version of the software that has certain features. It allows the developer to test the software and collect feedback.  It also allows the developer to decide what can be further developed and what cannot. This approach also considers the life cycle of the software. Depending on the software’s functionality, patenting the MVP can help the software survive the entire life cycle.

If you’re considering patenting a feature of your app, there are several things to keep in mind. A provisional application grants you twelve months to develop the MVP of your app and includes the term “patent pending” in the product. With modern requirements under the Alice test, you should include as much of the programs/ algorithms description as possible to meet the Section 112 requirements.  You can also show how the software enhances computer performance and having an attorney experienced in getting numerous other software patent applications past examination at the USPTO can be extremely helpful.

Provisional applications cost less than non-provisional patents and allow you to file priority and international applications in the same year. However, they have a few drawbacks, mainly in that they are just placeholders and not examined until converted into a non-provisional utility application.

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First to file and Software Patenting

The first-to-file rule applies to the United States patent system and it means that the first inventor to file a patent application for an invention will be awarded the patent, regardless of who was the first to invent the product.

This rule applies to software inventions as well. If two inventors independently invent the same software, the first inventor to file a patent application will be awarded the patent, regardless of who was the first to invent the software.

However, in the case of software inventions, it is important to note that the USPTO has a specific set of guidelines that must be met for software to be eligible for patent protection. The software must be novel, non-obvious, and useful. Additionally, the software must be described in the patent application in a manner that would enable a person having ordinary skill in the art to make and use the invention.

So, if you are the inventor of a software invention, it is important to file a patent application as soon as possible, but also make sure that the application meets the requirements set by the USPTO. It is also important to keep track of any public disclosures, demonstrations or offer for sale of the software as they can impact the patentability of the invention.

Chances Of Getting A Software Patent

To get a software patent, in addition to the eligibility tests detailed above, your app must have one or more novel features and non-obvious process. If an existing app already has a similar feature, it’s highly unlikely that yours will be patented. For one thing, your invention must solve a technical problem. This means that your invention cannot simply be a “remix” of an existing piece of conventional software. The second factor is the level of technical detail you must provide in your patent application.

The chance of getting a patent for software depends on the quality of the invention (such as the novelty and non-obviousness as presented in the claims) and the writing of the detailed description section of the patent application. An effective patent claim should highlight the engineering solutions to the technical challenges. The claims must be narrowly tailored to claim the particular pain point cured by the invention.

Improve Your Odds With Knowledge Of Prior Art in Software Patenting

A patent requires that the software is new, useful, and not obvious to ordinary people in the industry. Before drafting your patent application, you should first conduct a patent search. The purpose of this process is to identify prior art pertaining to the invention. This knowledge will help you craft your patent application. You should also include any commercial products that use your invention, as many software companies market their products without patent rights.

Before you begin your search, make sure you understand how the USPTO classification system works. There are numerous fields and classifications within the USPTO. Spend some time becoming familiar with these classification systems and advanced search techniques so that you can narrow your search down to relevant references. Once you know how to navigate the system, you’re ready to move on to the next step: drafting your software patent application.

If you have already created a prototype or have some ideas for a new product, you can use the USPTO public search facility to find existing and issued patents related to your invention. You can also contact the Patent and Trademark Resource Centers in your area for help. These centers often have trained staff who can assist you in your search. You can also use the Electronic Official Gazette to browse patent filings from most major patent-filing countries. You can also browse patents issued under the Patent Cooperation Treaty.

It’s essential to research relevant patents before filing your software patent application. Professional patent searchers use this information to identify similar software and technology. They know the patent classification better than inventors and patent attorneys, so they’re more knowledgeable about it. Also, they can help you navigate the patent filing process by guiding you through the patent language. Lastly, they can provide you with the necessary IDS form or online link to submit your software patent application.

In sum, before you apply for a software patent, you should first perform a patent search to see if your idea has already been patented. The process of drafting patent applications is costly and can lead to wasting time and money if you don’t do a thorough search. Patent searches can also save time and money. A software patent search can save you a lot of time and money. In addition, software patents last for about 20 years.

Steps To Prepare a Software Patent Application

A software patent is very similar to a regular patent, so the steps to get one are the same. However it is important to note that for a software-implemented invention to qualify for a patent, the inventor must fully describe the technical solution and the inventive concepts. The description should be comprehensive enough to support for the widest possible interpretation of the claims during the substantive examination. Further, your claims need to be strategically done so that it protects you just at the right angle.  If too narrow infringers can find ways to design around, and if too broad the courts can invalidate the patent.

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When applying for a patent for software, you should describe the general architecture of the software by diagramming the major modules of the software.  Then, like peeling an onion, you show details of each module as one or more flow charts. You must also include one flow chart that illustrates the overall working of the software. You must also include flow charts of the routines and subroutines contained within the software. If you don’t include these three important pieces of information, you’ll be at a major disadvantage during prosecution at the PTO and eventually during court litigation. If you think your software is innovative, you should seek patent protection and take the time to do it right.

1. Eligibility Criteria for Software Patents

To be eligible to obtain a patent, an invention must meet certain requirements. For example, it must be novel and useful. The invention must not have been disclosed, made available, or offered for sale. It also must not have been used in a previous manner. Most importantly, an applicant must show that the invention was not previously known to others. In other words, it must be new, unrepeatable, and unforeseen.

In general, the United States Patent Office has established five elements for patent eligibility:

  1. The invention must be a process, machine, or object;
  2. It must have utility;
  3. It must be novel or new;
  4. It must be non-obvious; and
  5. It must not have been published or available to the public before the patent application.

Once the applicant has met these eligibility requirements, he or she must submit a patent application. A patent application is a legal document that contains detailed information about a product, method, or process. The application is a process by which an inventor can protect an idea or invention in an attempt to get it commercially successful. A successful patent application can be used to prevent other businesses from using the software. With the rise in software patenting, businesses also use the patent to provide financial success and competitive advantage in the changing business world.

A new set of guidelines has been issued by the USPTO to assess the validity of patent applications. The updated procedures were designed to identify claims that recite judicial exceptions and incorporate considerations from the Alice/Mayo framework. The revised procedures at the USPTO Step 2A step, include the factors from the Alice/Mayo framework. The revisions will help examiners identify claims reciting judicial exceptions while increasing consistency and predictability. The Alice case requires that a court should first determine whether the claim covers an abstract idea. Basically, the courts don’t want a patent that blocks the entire field, so your claims should be narrowly tailored to cover the specifics of your novel software invention, yet be broad enough to exclude the competition from your novelty, so the claims need to be carefully balanced to give you meaningful protection. You can check out our other blogs that discuss the ban on patenting abstract ideas.

2. Non-Obviousness Criteria For Software Patents

Non-obviousness is one of the most important doctrines in software patents. Examiners at the USPTO will ask a hypothetical question to determine whether your invention is obvious. The patent examiner will look for elements that prove your invention is novel and will minimize computing resources needed to perform a task. If you can prove your invention is not obvious, you will have a high likelihood of being granted a patent. Therefore, it is vital that you consider the specificity of your invention and its potential to create a profitable business.

In the United States, the granting of a software patent based on non-existence of the invention is a complex process. There is a dividing line between what is considered to be “inventive” and what is “obvious.” Fortunately, the U.S. patent system allows applicants to introduce non-obvious facts after the filing of an application. Here are some of the steps necessary to win a patent based on non-obviousness:

  • First, the invention must not be obvious to someone in the field in which it is used. An example of an obvious product is an ordinary process that can be implemented by anyone with an average amount of knowledge. A product that is new and unexpected is non-obvious because it is an extension of a known product. A mobile app’s uniqueness may be based on its use of digital tools and its collection of data in novel ways.
  • In US patent law, the term “non-obvious” is one of the most crucial elements in patentability. It is an essential requirement to ensure that a patentable invention is not obvious to a person of ordinary skill in the field. A prior art document can be trivial if it contains motivation or a reasonable expectation of the claimed invention. But it must also explicitly teach the claimed invention.

The process of establishing non-obviousness is difficult because it requires an inventor to consider the complexities of the invention. A software patent is often issued by a court based on how obvious it is to others in the field. In addition to ensuring legal clarity, a software patent may also help to protect the innovations of a software company.

3. Inventive step for software patent application

This is the main criterion for deciding whether your idea is new or an obvious improvement. Patents are not just given out to anyone – they are meant to reward exceptional ideas and inspire creativity. Inventive Step is a critical criterion to judge whether your idea is novel or unique, and must represent a significant advance over existing ideas.

In order for your software to be patented, it must solve a technical problem or produce some other effect. Any technical effect or problem the software solves must be sufficient to warrant patent protection. It cannot be a purely functional feature that does not solve a technical problem. In this case, a software patent is more likely to be granted than one that is not. To be eligible for a software patent, your invention must perform a technical task or solve a technical problem.

A technical problem can be solved by the computer-implemented simulation, but it can also produce a technical effect that transcends the software program’s implementation. Regardless of whether a software program is patentable, it must be an improvement on existing technology.

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4. Filing a provisional Software Patent application

To file a provisional application, you must first draft a detailed description of your invention. The description may include a flow chart or details of the app’s functionality. Many ideas crystallize during the application process, so you should thoroughly understand the details of filing a provisional application. A provisional application will increase the likelihood of your patent application being accepted as a legitimate application.

The provisional application to patent software must meet certain requirements to be eligible for a U.S. patent. It must be submitted in the name of all inventors and disclose the invention. If the disclosure is incomplete, a provisional patent application is invalid and is not enforceable. In the United States, provisional patents are granted to products and processes that meet certain criteria, such as enablement and best mode. You can find more information about filing a provisional application on the U.S. Patent and Trademark Office website.

If you are in the process of patenting software, a provisional application will help you secure a position as a first filing. You can then move forward with distribution and production, and even look for investment capital. This means that it may be worthwhile to consider the pros and cons of filing a provisional application to patent software. 

After submitting a provisional application, within 12 months you must file a non-provisional application or the provisional application will expire and you can’t claim priority to it any more.

5. Filing a Non-Provisional Software Patent Application

After you have drafted your provisional patent application, you should submit it to the USPTO. The process of filing a provisional patent application will require you to submit a comprehensive information disclosure sheet. This document lists all the prior art, reference points, and industry knowledge used in your invention. This information is available for examiners to review. Unlike a provisional application, the cost of filing a formal patent application will be double that of filing a provisional application.

In addition to filing your non-provisional application, you must pay the examination fee and if all requirements are met, the PTO will grant the patent. A standard patent will last 20 years. It is important to pay the examination fee on time. Failure to pay this fee will result in your application lapse.

When you file the non-provisional patent application, you should also submit known prior art by preparing a document called an Information Disclosure Sheet (IDS). The IDS identifies all references, prior art, and industry knowledge relevant to the invention. The information disclosure sheet also gives examiners the same information as the inventor. A formal application is reviewed by the USPTO and costs twice as much as a provisional one.

Once issued, every four years you must pay a maintenance fee to keep the patent in force, so you should keep track of issue date and pay every four years up to 4 times and stop as the patents will expire after 20 years. The cost of a software patent application can be higher than for other types of inventions, due to its inherent complexity and the place of application.

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Abstract Idea Rejections in Software Patent Applications

An abstract idea to patent a software program requires two specific steps. First, an applicant must identify an abstract idea. Second, the applicant must show that the idea is an innovation added to an earlier, previously existing technology. Third, the applicant must explain how the added concept makes the abstract idea novel. While this is not a straightforward process, it is possible to overcome the “abstract idea” rejection and patent a software program as detailed above.

A software patent application may be denied because of the lack of clear claims. The claim must be novel or inventive enough to satisfy the patentability requirements. For example, a computer software program can’t be patented if it uses a mathematical formula. Furthermore, it must be related to an algorithm that performs calculations. Without the ability to show that a particular algorithm is unique, the applicant may not receive a patent.

Claims in Software Patent Applications

Patentability can be granted to software if it is new and not obvious, and if it is claimed as a method or improvement on existing technology.

There are two types of claims in patent applications: dependent claims and independent claims.

Independent claims are the broadest version of a patent application. Dependent claims seek to narrow down the invention by adding limitations or features to the claimed invention.

It is a good strategy for seeking protection for independent patent claims that have a broad scope. Broader independent claims can lead to greater protection and capture a wider pool of potential infringers.

The process of narrowing down claimed inventions through dependent claims has a purpose. Dependent claims can also be used to make it easier to identify the invention.

A picture claim, when combined with the claims it depends on, helps to define the invention and covers your commercial product. This will make it difficult for others to copy the product once you have the patent issued.

Having a broad range of claims provide you with the breadth and diversity of claim coverage to ensure you have the best chance in dealing with infringers who want to copy your go-to-market strategy.

Patenting A Business Method Software Invention

Getting a software patent for a particular business method involves tying a process to a specific computer technology. Typically, the process involves computer-implemented steps that take place over a communications network. However, it’s not enough to simply state that a particular method works in this way. The applicant must also describe the process in great detail. In the event that the method is not new and fully developed, it won’t be granted a patent.

When filing for a software patent for a business method, applicants should first complete the utility patent application for the invention. This will require a detailed description of the software, including the user interface and algorithm. Business methods are often described from multiple perspectives, so it is important to include as much technical information and detail as you can. Additionally, it’s important to note that software business method patents don’t claim the source code, since it is only copyrightable.

Costs in Preparing and Filing A Software Patent Application

The cost of obtaining a non-provisional software patent will depend on the type of software you have developed and your industry. The more competitive the field is, the more complicated the process will be. The following is a breakdown of the costs associated with software patenting.

When preparing to apply for a patent on software, you must consider several factors. The cost of a software patent can be determined by the complexity of the software and also the filing type. A law firm usually charges between $1,500 and $4,000 to conduct a prior art search. The results of this search are useful in identifying potential barriers to registration. It will also help you determine the scope of your software patent protection. It will also require an attorney’s time and knowledge to complete.

There are two main types of patent costs. The first category includes preparation, which includes everything you must do to get to the “patent pending” status, while the second is prosecution, which covers everything from the filing to the issue of a patent. Preparation costs include understanding the invention, drafting claims and specifications, getting illustrations done, and other odds and ends to file with the US Patent and Trademark Office.

Depending on the type of software and its complexity, the patent application may cost from $7,000 to $18,000 (depending on the type of invention). The filing fee for a small entity is only around $900, while fees for larger entities can be twice as much. If you choose to hire a patent attorney, you should expect to pay between $10,000 and $21,000 for the entire patent preparation and filing process. Patent attorney fees depend on the complexity of the application. In addition to the attorney’s fees, there are drawing fees.

A patent application for software may seem costly, especially for start-up companies. However, it is important to keep in mind that a patent application requires expertise and can lead to costly re-writes or responses to Office Actions. Choosing the right patent attorney can help you avoid these potential pitfalls. In short, you get what you pay for. So, do your homework. Do not make a hasty decision.

As with any legal process, experience matters. And in patent prosecution, a lawyer with experience will be invaluable. A patent application with a weak foundation is unlikely to receive broad protection. It may even fail to attract enough funding from investors and never get off the ground. That’s why start-up companies in biotechnology and software may have to pay 1.5 to two times these figures. The costs of patent software will depend on the complexity of the invention and its corresponding application. The fees are typically based on the size and complexity of the invention.

The costs of patenting software can include time, knowledge and monetary costs. While the benefits of are considerable, you should weigh the costs against the potential value of the software. If the potential return from the software is small, the costs of obtaining a patent are not worth it. However, if the software can generate substantial income for you and others, the investment may be well worth the effort.

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Time It Takes To Get A Software Patent

When it comes to filing a patent application, time to issuance is of the essence. Depending on the complexity of the invention, the time it takes to obtain a patent is typically long. A patent search can take up to three weeks. A patent examiner must examine many prior art references to determine whether or not a specific technology or combination is patentable. This examination can take a longer time for new inventions in rapidly evolving fields such as computer software.

The average time from filing a patent application to receiving a first office non-final action to final ruling is roughly two years. To expedite the process, you can file for a “Track One” application. This option will require an additional fee. For those that qualify as being older than 65, you can get acceleration without any cost. So if you are an older inventor, you can get your patent faster for free!

It is important to note that the number of patents being processed at the USPTO is growing, and more applications require a longer time to complete. While this process is lengthy and tedious, a good patent attorney will help you get through it.  A qualified patent attorney will provide expert advice on the timeline and what can be done to expedite the process. If you want to expedite the process, contact a patent attorney with extensive experience.

How To Use Your Software Patent

Once your invention has been patented, you can use it offensively and defensively. This is where a software patent can be of value, as it protects your idea from inappropriate use by your competition. A patent does not grant you the right to make or sell the product you developed. But it does grant you the right to sell or license it to others.  Thus, you can elect to sell the product or service yourself, or license the right to others in the marketplace to use your invention.  This is the whole reason you got a patent!

Another alternative is to register your IP with the U.S. Customs and Border Protection. Customs can block imports of infringing goods from foreign countries.  You can register your trademark, copyright, and patents with the US Customs and Border Protection to keep out infringing products.

For downloadable software, you can complain to Amazon to block the infringing applications.  A software patent can prevent copycats from entering the market and can lock out the entire U.S. market. Different national IP laws can also help the software industry thrive.

If your goal is to share your code with the world (e.g., by licensing it open-source or including it in an existing open-source project), patent protection may still be a good idea as the patent gives you control. It may not be financially feasible to file for patent protection if your software is of no commercial value.

Patenting Software with Artificial Intelligence (AI) Capability

Artificial Intelligence (AI), a transformative technology, has the potential to impact our economy and society in amazing ways.

PatentPC is a key player in protecting innovation and emerging technologies (e.g., AI, synthetic biology and blockchain), and maximizing these innovations’ widespread effect to improve competitiveness and economic prosperity as well as national security and solve global problems.

Patenting AI technology involves extra work to address subject matter eligibility and disclosure requirements for AI inventions. Various steps in the AI processing chains can be patentable.

For example, novel improvements in neural network architectures may be patentable.

Patents may be granted for new neuron connection structures for networks or new combinations of networks such as Perceptron, Feed Forward Neural Network, Multilayer Perceptron, Convolutional Neural Network, Radial Basis Functional Neural Network, Recurrent Neural Network, LSTM – Long Short-Term Memory, Sequence to Sequence Models, or Modular Neural Network, for example.

Novel combinations of input layer, hidden layer, and output layer may be patentable.

Also, consider the training steps that are novel. For example, novel on-the-fly training updates that improve accuracy with real-time data updates may be patented.

You may want to explore patenting novel methods that organize data in a specific manner to improve training speed, or unique methods to generate training features that improve processing speed.

You can patent the use of a particular loss function in a particular application that leads to a non-obvious speedup improvement.

You may also consider novel aspects of applying AI models to your specific application. Look for your configuration of the AI model that leads to improvement to the functioning of the computer itself. Also, look for how your deployment of AI effects the transformation or reduction of a particular article to a different state or thing.

Other areas to consider are how your specific arrangement adds a specific limitation other than what is well-understood, routine, and conventional in the software field, or how you add unconventional steps that confine the whole arrangement to a particular useful application.

You can also patent features exhibiting other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

Check out our latest AI patent examples and analysis.

Open-Source AI Issues

Open-source AI is a growing segment that benefits both developers and businesses. About half of businesses currently use open-source technology for AI/ML and this number will continue to increase.

Open-source AI refers to artificial intelligence technology that is freely available for commercial and noncommercial use under various open licenses.

These include:

 #1. Open-source datasets:

AI software can be trained using data. In open-source AI, both the test and training data are free. These datasets are available even if you don’t use open-source AI software. They will help you make your models more reliable, and more accurate.

#2. Open-source algorithms:

The algorithm and its core statistical model have been made freely available. They are typically available as open-source algorithm libraries.

You can use them as-is, train with enterprise information, or modify the code to create custom AI applications.

 #3. Open Source UI:

This open-source interface allows you to leverage open-source AI efficiently. These interfaces can be anything from simple command-line interfaces to complex GUIs.

A UI overlay could be created that uses a different algorithm library and does not contain its own.

While open-source AI implementations are popular, if you use these models, you can still patent unique applications of open-source AI.

For example, if you use open-sourced computer vision code in a novel arrangement to detect breast cancer, the combination of how to tweak the open-source model, how you configured the data/feature extraction, and how to train and update the model in the context of breast cancer detection can be patented.

It is crucial to have a patent lawyer that understands your invention’s technology. This includes both the medical device aspect as well as the software component. Our firm has obtained numerous AI patents. We can help you obtain patent protection for your AI invention.

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Software Patent Examples in Web 3.0 / Blockchains

Web 3.0 is a decentralized version of Web 2.0 that emphasizes openness and greater user utility. It is distinct from Web 2.0 which was built on centralized system.

The Features of Web 3.0 include:

1. 3D Graphics and The Metaverse

Web 3.0 allows many sectors to connect with the Metaverse virtually by using 3D design. Check out our repository of the latest metaverse patents made-simple.

2. Artificial Intelligence

Artificial Intelligence will become more sophisticated and computers will be able to understand and interpret human actions and speech in the same way as people in Web 3.0.

This will allow computers to recognize information more easily and offer users a more personal experience. There are a lot of patents on artificial intelligence already. We, at PatentPC, have analyzed several of the latest AI patents.

3. Connectivity

With Web 3.0, information is more connected because of semantic metadata. The new connectivity will allow users to access all information and provide a new level for communication.

Web 3.0 offers increased privacy and security. It uses cryptography to secure users’ data. Blockchain technology also allows for safer transactions between users. It can create an immutable record of transactions and activity that can be used to verify authenticity.

Web 3.0 allows users to interact with other websites and users. Users can now access content from multiple sources simultaneously, without leaving the site they are currently on.

This allows for a flexible design since websites can be redesigned in order to look different in different parts of the world or countries.

Web 3.0 has a greater global reach with more interactivity and flexibility.  It is crucial to have a patent lawyer that understands Ethereum and blockchain technology.

We have patented blockchains that create a trusted, unfilterable, uncensorable repository of data and information that is accessible worldwide. We can help you obtain patent protection for your blockchain and Web 3.0 inventions.

Software in Medical Device Patents

Over time, medical devices have become more software-based. These medical devices, which were originally mechanical in nature, can now be computer-controlled and operated using artificial intelligence.

Every day, more people are using smartphones to track their health and connect with wearable medical devices wirelessly. It was only a matter time before software would become a patentable medical device.

Software that meets these requirements can be considered a medical device by the US Food and Drug Administration (FDA). It can also be patentable. Software that can be considered a medical device (SaMD), is software that has information that is significant to making a healthcare decision. It also has an “independence” level, meaning that the software should be able to run on any general-purpose computing platform. The software should, at minimum in theory, be capable of performing its medical task without its “normal” hardware/housing.

It is crucial to have a patent lawyer that understands your invention’s technology. This includes both the medical device aspect as well as the software component. Our firm has practices in medical devices and in software and mobile apps. We can help you obtain patent protection for your medical device invention.

Developer Objections To Software Patents

Many open-source software developers are anti-patent. It is an army of lawyers and developers fighting for free and open-source software. Opponents of software patents argue that there are problems in software patenting and these include:

  • Software definition is difficult. Software is complex and varied, making it difficult to define. Some scholars argue that this approach is almost pointless.
  • Patent attorneys are often very creative in their claims and can obscure the true nature or the invention and thereby plague software patents by many problems.
  • Software is math – A program is the restatement of an algorithm in particular programming languages.  Since every programming language (Turing-complete) implements Church’s lambda calculus according to the Church-Turing thesis, a program is the transcription of a mathematical function, and since patentability is not possible for math, patentability is not possible for software either.
  • Software encourages patent thickets – Patent thickets form a dense network of patents that developers need to decode in order to create new software. One innovation may be protected by multiple patent owners, or a product may have several patents. Patent thickets can lead to increased difficulty in innovation, complicated cross-licensing relationships between companies, and discouragement for newcomers entering the software industry. While excluding software from the patent system would discourage some software innovations, the saving from litigation costs over disputed patent rights would more than compensate the economy for that cost. Thus, software hinders research and development of new software solutions.
  • Hinders innovation – The Electronic Frontier Foundation’s Defend Innovation white-paper concluded that many over-broad software patents are being awarded, which is actually stifling innovation. Interoperability is thought to promote innovation, and patent systems have the potential to block the development of such technologies.
  • Software’s nature is highly adaptive and combinatorial. It is meant to be an interconnected collection of pieces. Software design is therefore more effective if there are many independent components. This is crucial when patenting software and thus patenting software should be restricted in scope and must be agreed on by all parties.
  • There is no evidence to suggest that software patents have any positive effect on innovation, and furthermore, the system primarily encourages failing monopolists to inhibit competition by blocking innovation.

From the beginning, the battle over code ownership would define open-source movement over the next decades. The Microsoft vs Linux battle was perhaps the most famous early example of such a fight.

Fixed-Fee Software Patenting and Go-to-Market Protection

We have a dedicated IP practice to assist software, mobile app developers as well as entrepreneurs innovating upon software, here at PatentPC. Our IP practice for software and app developers helps clients to create the right IP strategy and then help them to implement it by seeking patent protection or other IP protections, as required. Don’t let your valuable software IP go unprotected.

We can help you with all your options at unparalleled budgets.

We will do everything we can to lower costs for our clients. We offer most of our services for a fixed price to meet their budgets with clear objectives.

For more information about our services, call us at 800-234-3032 or schedule a strategy meeting with us.

How to Patent Software

Software is ubiquitous nowadays. Straight from managing street lights, all the way to maintaining the security of IoT devices, we use software everywhere in our daily lives. Patents are a big part of software. Most of us don’t know how to go about the process of patenting the software we build. While it is a bit complicated, this article will take you through each step involved in the process of getting a strong patent for a piece of software.

First, Is Software Patentable?

The answer to the question is YES. Patent protection for software, where recognized, is available for inventions that are new, useful, and non-obvious in any technology field. The criteria of patentability are established in national patent laws.

Patents can protect many types of computer software in the United States, including mobile apps and Software as a Service (SaaS apps). This was not always true. In the 1960s, conventional wisdom was that computer programs were generally not patentable. In the 1970s and 1980s, the Supreme Court addressed the issue three times. First, it concluded that most software was copyrightable and not patentable. Then the Supreme Court indicated that anything man-made under the sun qualifies for patent protection, provided it meets all other patent requirements under Sections 102, 103 and 112, among others. 

Most recently, the 2014 Alice decision changed the rules about what software was eligible. This ruling reiterated that patents should not be based upon a fundamental idea. It must also include an “inventive step.” Just because a task is implemented using a computer, it does not mean that the process is new. This made it more difficult to patent computer programs, and reduced the number “business method” software patents. These patents are still possible, but they are becoming more difficult to obtain. Software is currently patentable, provided it is not directed at an abstract idea without more.

Today, software patents can be obtained to protect a wide range of methods, processes, codes or programs. Software can be viewed as scripts, programs, or applications or simply any code that runs within a system, a game or social media application. Software patent can protect the software itself, as well as its library, user interface, and algorithm. In addition, a patent can cover any technological aspect that enables a computer to carry out an essential function. This is the main reason why many people turn to the patent law for protection. For example, Amazon’s one-click-to-buy button was patented in 1999 and is still the most popular software product in the world.

Patent laws do not generally treat software-related inventions the same as other new technology advances. This could be because of a lack or understanding of the nature of software innovations and the protection afforded under different IP rights. Therefore some software can be patented while others cannot. Examples of software that is not patentable include software on underlying economic practices, specific methods of organizing human activities, and mathematical relationships.

In contrast, software that improves upon computer functionality or software with technical features is patentable, particularly if it decreases the number of computer horsepower needed to carry out a particular task.

Software is one of the most important subjects to patent, but it is also an area of uncertainty in U.S. patent law. Proper preparation can help ensure strong software patent. To prepare effectively for the patenting process, it is crucial to carefully analyze current patent law and decide what might qualify as a patentable innovation. The process requires careful consideration of how to frame the invention in the claims.

Patent Classifications applicable to mobile app and software inventions

These patent classifications are –

  1. Design patents.
  2. Utility patents.

Software Design Patents

Design patents can be granted for novel ornamental features of software interface designs and can be used to protect Graphical User Interfaces (or GUIs in short).

GUIs can be graphical icons, animations and visual indicators, among others, that help users to understand the many features of the program.

Essential Requirements of Design Patent Protection of GUIs:

#1. New and Novel.

Common to all patents, design patents are only granted for designs that are new and not obvious versions of existing designs.

#2. Article of Manufacture Requirement.

Any man-made device that contains a picture, design, or other tangible material can be an article of manufacture.

Standalone, the GUI design is not an article of manufacture, but when it is displayed on a mobile device or computer, the GUI becomes an article of manufacture protectable by a design patent.

 #3. Ornamental Design.

The design patent protects ornamental aspects of the article of manufacture with functional features.

The design cannot be solely dictated by function, or utility aspects of the article.  As such, the ornamental aspects of the GUI must not be linked to its functionality.

If a particular design is needed for functionality, it will not satisfy the ornamental requirement as there would be dependence between them. In order to be patent-eligible, one must consider whether the designs are independent and not dependent on each other in order for them to be eligible for law protection.

If you want to protect the GUI’s functional aspects, a utility patent should be applied to provide protection for its functionality. Depending on the situation, you may be possible to apply for both design and utility patent applications for the same product.

Software Utility Patents

While design patent protection is available to protect ornamental aspects of the user interface, functional aspects should be protected through a utility patent.

A software utility patent covers algorithmic methods and processes and can be obtained by focusing on the following:

  1. Improvement to another technology or technical field;
  2. Improvement to the functioning of the computer itself;
  3. Effecting transformation or reduction of a particular article to a different state or thing;
  4. Adding a specific limitation other than what is well-understood, routine, and conventional in the field, or adding unconventional steps that confine the claim to a particularly useful application; or
  5. Exhibiting other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

In general, you need to teach others how the invention can be implemented.

This can be done through flowcharts, pseudo-code, timing charts, and state-transition charts, among others. Sometimes pseudo-code can be used to describe complex algorithms. Flowcharts are the most common way to do this, but screenshots illustrating the operation of the software can also be used.

If you want to protect the GUI’s functional aspects, a utility patent should be applied to provide protection for its functionality. Depending on the situation, you may be possible to apply for both design and utility patent applications for the same product.

Here’s an example of an utility patent.

To Patent or Not to Patent Your Software?

It is a crucial decision for inventors to decide whether or not you should seek a software license. This decision can have repercussions beyond software patenting.

Obtaining a patent may not be necessary in all cases.  For example, if you have a faster way of training your learning machine, this technology is all done in secret and no one knows about how you train your AI faster, then you should consider trade secret protection

A good analogy is KFC’s “blend of 11 herbs & spices”, which is the secret recipe used to make its Kentucky Fried Chicken.  It is one of the most recognizable trade secrets. People have been trying to find or duplicate this secret recipe for years without much proven success.

Trade secrets are things that have commercial value and are not generally known. They can also be subject to secrecy efforts and can be extremely valuable and last for almost indefinite time. Once a secret is revealed, it is no longer valuable.

In contrast, a patent is open to the public, and they are free to read and learn, but if they use the concepts in the patent, they need to take a license or obtain permission from you.  As software is a process, obtaining a patent for it will protect your invention. The results of your software and the functionalities it enables are the main ingredients for obtaining a patent. Even if software is simple and easy to copy, it will still benefit you to protect your work with a patent. If you have a new idea that isn’t obvious, a patent will protect it and give you control on how others use your idea, even if you decided to open-source the code.

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Benefits of Obtaining A Software Patent

In the software industry, the ability to protect an innovation with a patent is a vital tool for startups. Without the protection of a patent, smaller companies can’t compete with larger companies. Even startups with strong technical skills and a solid product idea may find it difficult to survive against big tech companies. Consequently, securing a patent is crucial. A software patent has many benefits and can be the difference between success and failure.

Software and web applications are valuable business assets that should be protected by tech companies using intellectual property rights laws such as patent protection as well as trademark protection.

Software developers often seek patent protection for the software’s process. Your software app may be patent eligible if it does more than just calculate, track data, or render a user interface. Also, the software invention must be original and not obvious.

But software patents cover more than just mobile apps. Software patents can cover a computer software program, a mobile device app, a web app, or software that is integrated into a larger system or a mechanical device.

While many founders do not consider patenting, you should look up the example of Phhhoto v Meta.  There are reasons why major software companies file patent applications to protect their inventions. Startups should remember that software patents are first and foremost business assets. While many businesses can benefit from a software patent, the patent system can also be used strategically to limit competitors. It may also be beneficial to cross-license your software with a competitor and gain access to their technology. In the end, a powerful patent portfolio can keep you out of patent infringement lawsuits and prevent retaliatory actions.

The Best Time To File For Software Patents

The right time to protect a software invention with patents can depend on several factors, including the stage of development of the software and the company’s business goals. Here are a few general guidelines to consider when determining the right time to file a patent application for a software invention:

  1. Before publicly disclosing or offering for sale: In order to be eligible for a patent, an invention must be novel and non-obvious. Once an invention is publicly disclosed or offered for sale, it is no longer eligible for a patent in most countries, including the United States. Therefore, it is generally advisable to file a patent application before publicly disclosing or offering for sale a software invention.
  2. Before competitors file for patents: If a company believes that its software invention is valuable and that it has potential competitors, it may want to file a patent application as soon as possible in order to secure patent rights before competitors do.
  3. When the company is ready to commercialize: Software inventions can be expensive to patent, so a company may want to wait until it is ready to commercialize the software before investing in a patent application.
  4. When the company is trying to raise funding: Patents can be valuable assets that can be used to attract investors, so a company may want to file a patent application when it is trying to raise funding.
  5. When the company is ready to license or sell the technology: Patents can be used to protect the company’s rights to a software invention and to generate revenue through licensing or sales.

It’s important to note that each case is different and the best time to file a patent application for a software invention will depend on the specific circumstances of the case. It’s always a good idea to consult with a patent attorney to discuss the best strategy for protecting a software invention.

Before You Apply For A Software Patent

Before applying for a software patent, you must be able to conduct a commercial viability assessment before you patent your software idea. If your software solves complex mathematical equations, then you need to know how to do it. It would be almost impossible to create software that is successful on the market without this knowledge.

Although a prototype is not necessary, it’s important to create flowcharts that describe the software’s functionality and then write a detailed description along with claims and drawings for your patent application.

The best way to approach it is to first develop a minimum viable product, or MVP, of your software. A MVP is a working version of the software that has certain features. It allows the developer to test the software and collect feedback.  It also allows the developer to decide what can be further developed and what cannot. This approach also considers the life cycle of the software. Depending on the software’s functionality, patenting the MVP can help the software survive the entire life cycle.

If you’re considering patenting a feature of your app, there are several things to keep in mind. A provisional application grants you twelve months to develop the MVP of your app and includes the term “patent pending” in the product. With modern requirements under the Alice test, you should include as much of the programs/ algorithms description as possible to meet the Section 112 requirements.  You can also show how the software enhances computer performance and having an attorney experienced in getting numerous other software patent applications past examination at the USPTO can be extremely helpful.

Provisional applications cost less than non-provisional patents and allow you to file priority and international applications in the same year. However, they have a few drawbacks, mainly in that they are just placeholders and not examined until converted into a non-provisional utility application.

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First to file and Software Patenting

The first-to-file rule applies to the United States patent system and it means that the first inventor to file a patent application for an invention will be awarded the patent, regardless of who was the first to invent the product.

This rule applies to software inventions as well. If two inventors independently invent the same software, the first inventor to file a patent application will be awarded the patent, regardless of who was the first to invent the software.

However, in the case of software inventions, it is important to note that the USPTO has a specific set of guidelines that must be met for software to be eligible for patent protection. The software must be novel, non-obvious, and useful. Additionally, the software must be described in the patent application in a manner that would enable a person having ordinary skill in the art to make and use the invention.

So, if you are the inventor of a software invention, it is important to file a patent application as soon as possible, but also make sure that the application meets the requirements set by the USPTO. It is also important to keep track of any public disclosures, demonstrations or offer for sale of the software as they can impact the patentability of the invention.

Chances Of Getting A Software Patent

To get a software patent, in addition to the eligibility tests detailed above, your app must have one or more novel features and non-obvious process. If an existing app already has a similar feature, it’s highly unlikely that yours will be patented. For one thing, your invention must solve a technical problem. This means that your invention cannot simply be a “remix” of an existing piece of conventional software. The second factor is the level of technical detail you must provide in your patent application.

The chance of getting a patent for software depends on the quality of the invention (such as the novelty and non-obviousness as presented in the claims) and the writing of the detailed description section of the patent application. An effective patent claim should highlight the engineering solutions to the technical challenges. The claims must be narrowly tailored to claim the particular pain point cured by the invention.

Improve Your Odds With Knowledge Of Prior Art in Software Patenting

A patent requires that the software is new, useful, and not obvious to ordinary people in the industry. Before drafting your patent application, you should first conduct a patent search. The purpose of this process is to identify prior art pertaining to the invention. This knowledge will help you craft your patent application. You should also include any commercial products that use your invention, as many software companies market their products without patent rights.

Before you begin your search, make sure you understand how the USPTO classification system works. There are numerous fields and classifications within the USPTO. Spend some time becoming familiar with these classification systems and advanced search techniques so that you can narrow your search down to relevant references. Once you know how to navigate the system, you’re ready to move on to the next step: drafting your software patent application.

If you have already created a prototype or have some ideas for a new product, you can use the USPTO public search facility to find existing and issued patents related to your invention. You can also contact the Patent and Trademark Resource Centers in your area for help. These centers often have trained staff who can assist you in your search. You can also use the Electronic Official Gazette to browse patent filings from most major patent-filing countries. You can also browse patents issued under the Patent Cooperation Treaty.

It’s essential to research relevant patents before filing your software patent application. Professional patent searchers use this information to identify similar software and technology. They know the patent classification better than inventors and patent attorneys, so they’re more knowledgeable about it. Also, they can help you navigate the patent filing process by guiding you through the patent language. Lastly, they can provide you with the necessary IDS form or online link to submit your software patent application.

In sum, before you apply for a software patent, you should first perform a patent search to see if your idea has already been patented. The process of drafting patent applications is costly and can lead to wasting time and money if you don’t do a thorough search. Patent searches can also save time and money. A software patent search can save you a lot of time and money. In addition, software patents last for about 20 years.

Steps To Prepare a Software Patent Application

A software patent is very similar to a regular patent, so the steps to get one are the same. However it is important to note that for a software-implemented invention to qualify for a patent, the inventor must fully describe the technical solution and the inventive concepts. The description should be comprehensive enough to support for the widest possible interpretation of the claims during the substantive examination. Further, your claims need to be strategically done so that it protects you just at the right angle.  If too narrow infringers can find ways to design around, and if too broad the courts can invalidate the patent.

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When applying for a patent for software, you should describe the general architecture of the software by diagramming the major modules of the software.  Then, like peeling an onion, you show details of each module as one or more flow charts. You must also include one flow chart that illustrates the overall working of the software. You must also include flow charts of the routines and subroutines contained within the software. If you don’t include these three important pieces of information, you’ll be at a major disadvantage during prosecution at the PTO and eventually during court litigation. If you think your software is innovative, you should seek patent protection and take the time to do it right.

1. Eligibility Criteria for Software Patents

To be eligible to obtain a patent, an invention must meet certain requirements. For example, it must be novel and useful. The invention must not have been disclosed, made available, or offered for sale. It also must not have been used in a previous manner. Most importantly, an applicant must show that the invention was not previously known to others. In other words, it must be new, unrepeatable, and unforeseen.

In general, the United States Patent Office has established five elements for patent eligibility:

  1. The invention must be a process, machine, or object;
  2. It must have utility;
  3. It must be novel or new;
  4. It must be non-obvious; and
  5. It must not have been published or available to the public before the patent application.

Once the applicant has met these eligibility requirements, he or she must submit a patent application. A patent application is a legal document that contains detailed information about a product, method, or process. The application is a process by which an inventor can protect an idea or invention in an attempt to get it commercially successful. A successful patent application can be used to prevent other businesses from using the software. With the rise in software patenting, businesses also use the patent to provide financial success and competitive advantage in the changing business world.

A new set of guidelines has been issued by the USPTO to assess the validity of patent applications. The updated procedures were designed to identify claims that recite judicial exceptions and incorporate considerations from the Alice/Mayo framework. The revised procedures at the USPTO Step 2A step, include the factors from the Alice/Mayo framework. The revisions will help examiners identify claims reciting judicial exceptions while increasing consistency and predictability. The Alice case requires that a court should first determine whether the claim covers an abstract idea. Basically, the courts don’t want a patent that blocks the entire field, so your claims should be narrowly tailored to cover the specifics of your novel software invention, yet be broad enough to exclude the competition from your novelty, so the claims need to be carefully balanced to give you meaningful protection. You can check out our other blogs that discuss the ban on patenting abstract ideas.

2. Non-Obviousness Criteria For Software Patents

Non-obviousness is one of the most important doctrines in software patents. Examiners at the USPTO will ask a hypothetical question to determine whether your invention is obvious. The patent examiner will look for elements that prove your invention is novel and will minimize computing resources needed to perform a task. If you can prove your invention is not obvious, you will have a high likelihood of being granted a patent. Therefore, it is vital that you consider the specificity of your invention and its potential to create a profitable business.

In the United States, the granting of a software patent based on non-existence of the invention is a complex process. There is a dividing line between what is considered to be “inventive” and what is “obvious.” Fortunately, the U.S. patent system allows applicants to introduce non-obvious facts after the filing of an application. Here are some of the steps necessary to win a patent based on non-obviousness:

  • First, the invention must not be obvious to someone in the field in which it is used. An example of an obvious product is an ordinary process that can be implemented by anyone with an average amount of knowledge. A product that is new and unexpected is non-obvious because it is an extension of a known product. A mobile app’s uniqueness may be based on its use of digital tools and its collection of data in novel ways.
  • In US patent law, the term “non-obvious” is one of the most crucial elements in patentability. It is an essential requirement to ensure that a patentable invention is not obvious to a person of ordinary skill in the field. A prior art document can be trivial if it contains motivation or a reasonable expectation of the claimed invention. But it must also explicitly teach the claimed invention.

The process of establishing non-obviousness is difficult because it requires an inventor to consider the complexities of the invention. A software patent is often issued by a court based on how obvious it is to others in the field. In addition to ensuring legal clarity, a software patent may also help to protect the innovations of a software company.

3. Inventive step for software patent application

This is the main criterion for deciding whether your idea is new or an obvious improvement. Patents are not just given out to anyone – they are meant to reward exceptional ideas and inspire creativity. Inventive Step is a critical criterion to judge whether your idea is novel or unique, and must represent a significant advance over existing ideas.

In order for your software to be patented, it must solve a technical problem or produce some other effect. Any technical effect or problem the software solves must be sufficient to warrant patent protection. It cannot be a purely functional feature that does not solve a technical problem. In this case, a software patent is more likely to be granted than one that is not. To be eligible for a software patent, your invention must perform a technical task or solve a technical problem.

A technical problem can be solved by the computer-implemented simulation, but it can also produce a technical effect that transcends the software program’s implementation. Regardless of whether a software program is patentable, it must be an improvement on existing technology.

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4. Filing a provisional Software Patent application

To file a provisional application, you must first draft a detailed description of your invention. The description may include a flow chart or details of the app’s functionality. Many ideas crystallize during the application process, so you should thoroughly understand the details of filing a provisional application. A provisional application will increase the likelihood of your patent application being accepted as a legitimate application.

The provisional application to patent software must meet certain requirements to be eligible for a U.S. patent. It must be submitted in the name of all inventors and disclose the invention. If the disclosure is incomplete, a provisional patent application is invalid and is not enforceable. In the United States, provisional patents are granted to products and processes that meet certain criteria, such as enablement and best mode. You can find more information about filing a provisional application on the U.S. Patent and Trademark Office website.

If you are in the process of patenting software, a provisional application will help you secure a position as a first filing. You can then move forward with distribution and production, and even look for investment capital. This means that it may be worthwhile to consider the pros and cons of filing a provisional application to patent software. 

After submitting a provisional application, within 12 months you must file a non-provisional application or the provisional application will expire and you can’t claim priority to it any more.

5. Filing a Non-Provisional Software Patent Application

After you have drafted your provisional patent application, you should submit it to the USPTO. The process of filing a provisional patent application will require you to submit a comprehensive information disclosure sheet. This document lists all the prior art, reference points, and industry knowledge used in your invention. This information is available for examiners to review. Unlike a provisional application, the cost of filing a formal patent application will be double that of filing a provisional application.

In addition to filing your non-provisional application, you must pay the examination fee and if all requirements are met, the PTO will grant the patent. A standard patent will last 20 years. It is important to pay the examination fee on time. Failure to pay this fee will result in your application lapse.

When you file the non-provisional patent application, you should also submit known prior art by preparing a document called an Information Disclosure Sheet (IDS). The IDS identifies all references, prior art, and industry knowledge relevant to the invention. The information disclosure sheet also gives examiners the same information as the inventor. A formal application is reviewed by the USPTO and costs twice as much as a provisional one.

Once issued, every four years you must pay a maintenance fee to keep the patent in force, so you should keep track of issue date and pay every four years up to 4 times and stop as the patents will expire after 20 years. The cost of a software patent application can be higher than for other types of inventions, due to its inherent complexity and the place of application.

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Abstract Idea Rejections in Software Patent Applications

An abstract idea to patent a software program requires two specific steps. First, an applicant must identify an abstract idea. Second, the applicant must show that the idea is an innovation added to an earlier, previously existing technology. Third, the applicant must explain how the added concept makes the abstract idea novel. While this is not a straightforward process, it is possible to overcome the “abstract idea” rejection and patent a software program as detailed above.

A software patent application may be denied because of the lack of clear claims. The claim must be novel or inventive enough to satisfy the patentability requirements. For example, a computer software program can’t be patented if it uses a mathematical formula. Furthermore, it must be related to an algorithm that performs calculations. Without the ability to show that a particular algorithm is unique, the applicant may not receive a patent.

Claims in Software Patent Applications

Patentability can be granted to software if it is new and not obvious, and if it is claimed as a method or improvement on existing technology.

There are two types of claims in patent applications: dependent claims and independent claims.

Independent claims are the broadest version of a patent application. Dependent claims seek to narrow down the invention by adding limitations or features to the claimed invention.

It is a good strategy for seeking protection for independent patent claims that have a broad scope. Broader independent claims can lead to greater protection and capture a wider pool of potential infringers.

The process of narrowing down claimed inventions through dependent claims has a purpose. Dependent claims can also be used to make it easier to identify the invention.

A picture claim, when combined with the claims it depends on, helps to define the invention and covers your commercial product. This will make it difficult for others to copy the product once you have the patent issued.

Having a broad range of claims provide you with the breadth and diversity of claim coverage to ensure you have the best chance in dealing with infringers who want to copy your go-to-market strategy.

Patenting A Business Method Software Invention

Getting a software patent for a particular business method involves tying a process to a specific computer technology. Typically, the process involves computer-implemented steps that take place over a communications network. However, it’s not enough to simply state that a particular method works in this way. The applicant must also describe the process in great detail. In the event that the method is not new and fully developed, it won’t be granted a patent.

When filing for a software patent for a business method, applicants should first complete the utility patent application for the invention. This will require a detailed description of the software, including the user interface and algorithm. Business methods are often described from multiple perspectives, so it is important to include as much technical information and detail as you can. Additionally, it’s important to note that software business method patents don’t claim the source code, since it is only copyrightable.

Costs in Preparing and Filing A Software Patent Application

The cost of obtaining a non-provisional software patent will depend on the type of software you have developed and your industry. The more competitive the field is, the more complicated the process will be. The following is a breakdown of the costs associated with software patenting.

When preparing to apply for a patent on software, you must consider several factors. The cost of a software patent can be determined by the complexity of the software and also the filing type. A law firm usually charges between $1,500 and $4,000 to conduct a prior art search. The results of this search are useful in identifying potential barriers to registration. It will also help you determine the scope of your software patent protection. It will also require an attorney’s time and knowledge to complete.

There are two main types of patent costs. The first category includes preparation, which includes everything you must do to get to the “patent pending” status, while the second is prosecution, which covers everything from the filing to the issue of a patent. Preparation costs include understanding the invention, drafting claims and specifications, getting illustrations done, and other odds and ends to file with the US Patent and Trademark Office.

Depending on the type of software and its complexity, the patent application may cost from $7,000 to $18,000 (depending on the type of invention). The filing fee for a small entity is only around $900, while fees for larger entities can be twice as much. If you choose to hire a patent attorney, you should expect to pay between $10,000 and $21,000 for the entire patent preparation and filing process. Patent attorney fees depend on the complexity of the application. In addition to the attorney’s fees, there are drawing fees.

A patent application for software may seem costly, especially for start-up companies. However, it is important to keep in mind that a patent application requires expertise and can lead to costly re-writes or responses to Office Actions. Choosing the right patent attorney can help you avoid these potential pitfalls. In short, you get what you pay for. So, do your homework. Do not make a hasty decision.

As with any legal process, experience matters. And in patent prosecution, a lawyer with experience will be invaluable. A patent application with a weak foundation is unlikely to receive broad protection. It may even fail to attract enough funding from investors and never get off the ground. That’s why start-up companies in biotechnology and software may have to pay 1.5 to two times these figures. The costs of patent software will depend on the complexity of the invention and its corresponding application. The fees are typically based on the size and complexity of the invention.

The costs of patenting software can include time, knowledge and monetary costs. While the benefits of are considerable, you should weigh the costs against the potential value of the software. If the potential return from the software is small, the costs of obtaining a patent are not worth it. However, if the software can generate substantial income for you and others, the investment may be well worth the effort.

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Time It Takes To Get A Software Patent

When it comes to filing a patent application, time to issuance is of the essence. Depending on the complexity of the invention, the time it takes to obtain a patent is typically long. A patent search can take up to three weeks. A patent examiner must examine many prior art references to determine whether or not a specific technology or combination is patentable. This examination can take a longer time for new inventions in rapidly evolving fields such as computer software.

The average time from filing a patent application to receiving a first office non-final action to final ruling is roughly two years. To expedite the process, you can file for a “Track One” application. This option will require an additional fee. For those that qualify as being older than 65, you can get acceleration without any cost. So if you are an older inventor, you can get your patent faster for free!

It is important to note that the number of patents being processed at the USPTO is growing, and more applications require a longer time to complete. While this process is lengthy and tedious, a good patent attorney will help you get through it.  A qualified patent attorney will provide expert advice on the timeline and what can be done to expedite the process. If you want to expedite the process, contact a patent attorney with extensive experience.

How To Use Your Software Patent

Once your invention has been patented, you can use it offensively and defensively. This is where a software patent can be of value, as it protects your idea from inappropriate use by your competition. A patent does not grant you the right to make or sell the product you developed. But it does grant you the right to sell or license it to others.  Thus, you can elect to sell the product or service yourself, or license the right to others in the marketplace to use your invention.  This is the whole reason you got a patent!

Another alternative is to register your IP with the U.S. Customs and Border Protection. Customs can block imports of infringing goods from foreign countries.  You can register your trademark, copyright, and patents with the US Customs and Border Protection to keep out infringing products.

For downloadable software, you can complain to Amazon to block the infringing applications.  A software patent can prevent copycats from entering the market and can lock out the entire U.S. market. Different national IP laws can also help the software industry thrive.

If your goal is to share your code with the world (e.g., by licensing it open-source or including it in an existing open-source project), patent protection may still be a good idea as the patent gives you control. It may not be financially feasible to file for patent protection if your software is of no commercial value.

Patenting Software with Artificial Intelligence (AI) Capability

Artificial Intelligence (AI), a transformative technology, has the potential to impact our economy and society in amazing ways.

PatentPC is a key player in protecting innovation and emerging technologies (e.g., AI, synthetic biology and blockchain), and maximizing these innovations’ widespread effect to improve competitiveness and economic prosperity as well as national security and solve global problems.

Patenting AI technology involves extra work to address subject matter eligibility and disclosure requirements for AI inventions. Various steps in the AI processing chains can be patentable.

For example, novel improvements in neural network architectures may be patentable.

Patents may be granted for new neuron connection structures for networks or new combinations of networks such as Perceptron, Feed Forward Neural Network, Multilayer Perceptron, Convolutional Neural Network, Radial Basis Functional Neural Network, Recurrent Neural Network, LSTM – Long Short-Term Memory, Sequence to Sequence Models, or Modular Neural Network, for example.

Novel combinations of input layer, hidden layer, and output layer may be patentable.

Also, consider the training steps that are novel. For example, novel on-the-fly training updates that improve accuracy with real-time data updates may be patented.

You may want to explore patenting novel methods that organize data in a specific manner to improve training speed, or unique methods to generate training features that improve processing speed.

You can patent the use of a particular loss function in a particular application that leads to a non-obvious speedup improvement.

You may also consider novel aspects of applying AI models to your specific application. Look for your configuration of the AI model that leads to improvement to the functioning of the computer itself. Also, look for how your deployment of AI effects the transformation or reduction of a particular article to a different state or thing.

Other areas to consider are how your specific arrangement adds a specific limitation other than what is well-understood, routine, and conventional in the software field, or how you add unconventional steps that confine the whole arrangement to a particular useful application.

You can also patent features exhibiting other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

Check out our latest AI patent examples and analysis.

Open-Source AI Issues

Open-source AI is a growing segment that benefits both developers and businesses. About half of businesses currently use open-source technology for AI/ML and this number will continue to increase.

Open-source AI refers to artificial intelligence technology that is freely available for commercial and noncommercial use under various open licenses.

These include:

 #1. Open-source datasets:

AI software can be trained using data. In open-source AI, both the test and training data are free. These datasets are available even if you don’t use open-source AI software. They will help you make your models more reliable, and more accurate.

#2. Open-source algorithms:

The algorithm and its core statistical model have been made freely available. They are typically available as open-source algorithm libraries.

You can use them as-is, train with enterprise information, or modify the code to create custom AI applications.

 #3. Open Source UI:

This open-source interface allows you to leverage open-source AI efficiently. These interfaces can be anything from simple command-line interfaces to complex GUIs.

A UI overlay could be created that uses a different algorithm library and does not contain its own.

While open-source AI implementations are popular, if you use these models, you can still patent unique applications of open-source AI.

For example, if you use open-sourced computer vision code in a novel arrangement to detect breast cancer, the combination of how to tweak the open-source model, how you configured the data/feature extraction, and how to train and update the model in the context of breast cancer detection can be patented.

It is crucial to have a patent lawyer that understands your invention’s technology. This includes both the medical device aspect as well as the software component. Our firm has obtained numerous AI patents. We can help you obtain patent protection for your AI invention.

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Software Patent Examples in Web 3.0 / Blockchains

Web 3.0 is a decentralized version of Web 2.0 that emphasizes openness and greater user utility. It is distinct from Web 2.0 which was built on centralized system.

The Features of Web 3.0 include:

1. 3D Graphics and The Metaverse

Web 3.0 allows many sectors to connect with the Metaverse virtually by using 3D design. Check out our repository of the latest metaverse patents made-simple.

2. Artificial Intelligence

Artificial Intelligence will become more sophisticated and computers will be able to understand and interpret human actions and speech in the same way as people in Web 3.0.

This will allow computers to recognize information more easily and offer users a more personal experience. There are a lot of patents on artificial intelligence already. We, at PatentPC, have analyzed several of the latest AI patents.

3. Connectivity

With Web 3.0, information is more connected because of semantic metadata. The new connectivity will allow users to access all information and provide a new level for communication.

Web 3.0 offers increased privacy and security. It uses cryptography to secure users’ data. Blockchain technology also allows for safer transactions between users. It can create an immutable record of transactions and activity that can be used to verify authenticity.

Web 3.0 allows users to interact with other websites and users. Users can now access content from multiple sources simultaneously, without leaving the site they are currently on.

This allows for a flexible design since websites can be redesigned in order to look different in different parts of the world or countries.

Web 3.0 has a greater global reach with more interactivity and flexibility.  It is crucial to have a patent lawyer that understands Ethereum and blockchain technology.

We have patented blockchains that create a trusted, unfilterable, uncensorable repository of data and information that is accessible worldwide. We can help you obtain patent protection for your blockchain and Web 3.0 inventions.

Software in Medical Device Patents

Over time, medical devices have become more software-based. These medical devices, which were originally mechanical in nature, can now be computer-controlled and operated using artificial intelligence.

Every day, more people are using smartphones to track their health and connect with wearable medical devices wirelessly. It was only a matter time before software would become a patentable medical device.

Software that meets these requirements can be considered a medical device by the US Food and Drug Administration (FDA). It can also be patentable. Software that can be considered a medical device (SaMD), is software that has information that is significant to making a healthcare decision. It also has an “independence” level, meaning that the software should be able to run on any general-purpose computing platform. The software should, at minimum in theory, be capable of performing its medical task without its “normal” hardware/housing.

It is crucial to have a patent lawyer that understands your invention’s technology. This includes both the medical device aspect as well as the software component. Our firm has practices in medical devices and in software and mobile apps. We can help you obtain patent protection for your medical device invention.

Developer Objections To Software Patents

Many open-source software developers are anti-patent. It is an army of lawyers and developers fighting for free and open-source software. Opponents of software patents argue that there are problems in software patenting and these include:

  • Software definition is difficult. Software is complex and varied, making it difficult to define. Some scholars argue that this approach is almost pointless.
  • Patent attorneys are often very creative in their claims and can obscure the true nature or the invention and thereby plague software patents by many problems.
  • Software is math – A program is the restatement of an algorithm in particular programming languages.  Since every programming language (Turing-complete) implements Church’s lambda calculus according to the Church-Turing thesis, a program is the transcription of a mathematical function, and since patentability is not possible for math, patentability is not possible for software either.
  • Software encourages patent thickets – Patent thickets form a dense network of patents that developers need to decode in order to create new software. One innovation may be protected by multiple patent owners, or a product may have several patents. Patent thickets can lead to increased difficulty in innovation, complicated cross-licensing relationships between companies, and discouragement for newcomers entering the software industry. While excluding software from the patent system would discourage some software innovations, the saving from litigation costs over disputed patent rights would more than compensate the economy for that cost. Thus, software hinders research and development of new software solutions.
  • Hinders innovation – The Electronic Frontier Foundation’s Defend Innovation white-paper concluded that many over-broad software patents are being awarded, which is actually stifling innovation. Interoperability is thought to promote innovation, and patent systems have the potential to block the development of such technologies.
  • Software’s nature is highly adaptive and combinatorial. It is meant to be an interconnected collection of pieces. Software design is therefore more effective if there are many independent components. This is crucial when patenting software and thus patenting software should be restricted in scope and must be agreed on by all parties.
  • There is no evidence to suggest that software patents have any positive effect on innovation, and furthermore, the system primarily encourages failing monopolists to inhibit competition by blocking innovation.

From the beginning, the battle over code ownership would define open-source movement over the next decades. The Microsoft vs Linux battle was perhaps the most famous early example of such a fight.

Fixed-Fee Software Patenting and Go-to-Market Protection

We have a dedicated IP practice to assist software, mobile app developers as well as entrepreneurs innovating upon software, here at PatentPC. Our IP practice for software and app developers helps clients to create the right IP strategy and then help them to implement it by seeking patent protection or other IP protections, as required. Don’t let your valuable software IP go unprotected.

We can help you with all your options at unparalleled budgets.

We will do everything we can to lower costs for our clients. We offer most of our services for a fixed price to meet their budgets with clear objectives.

For more information about our services, call us at 800-234-3032 or schedule a strategy meeting with us.