Yes, patenting software is basically the same as patenting anything else. The difference is that software has to meet additional requirements that do not apply to other patent applications. The complex nature of the requirements means you should consider professional help. Only patent attorneys and agents can help with patenting your software. Therefore, be sure to check that your patent practitioner is registered at the United States Patent and Trademark Office (USPTO).

The first step is to determine the core of your innovation. How does the software interact with the hardware? How does the software process data? Is the software a method, system, apparatus, or network? Is it the processing of data or perhaps even the software itself?

Basic Requirements to Patenting Software

Software must meet the basic requirements to be patentable just like any other application.

What are the basic requirements for software to be eligible to apply for patent protection? When patenting anything in the U.S., software included, the claims of the invention must meet four criteria: 1) the invention must consist of patent eligible subject matter; 2) it must be novel (new); 3) the invention must be useful; and 4) it must be non-obvious (this is similar to the international application requirement that the claims involve an inventive step).

It is important to note the impact of the legal cases of Myriad, Mayo, and Alice on patent eligible subject matter for softwares. The cases have changed what is patentable in the field of software by determining there are requirements for something more than merely automating business processes to be patentable. These cases essentially suggested the solution was to include special and specific hardware to ensure that the software is more than mere automation of a business process or method. Today, we use a more sophisticated approach including the USPTO’s multiple-step test for patent eligible subject matter.

It is highly recommended that you seek the counsel of a USPTO registered patent practitioner to make these determinations for a software patent application. The patent practitioner can also provide assistance in writing and filing a patent application for your new software invention. Software patents are generally written in the form of method claims to capture the features and uses of the software.

A software invention’s claims must meet all four patent eligibility requirements and have a complete and proper disclosure of the invention that meets all of the formal and substantive requirements. Once filed, a patent can be obtained for a new software invention.

Patent Attorney Help with Utility Patent Applications

What is Patent Eligible Subject Matter? Patent eligible subject matter is a claim to a new process, machine, manufacture, or composition of matter. Unless the claims recite elements that are significantly more, the claims cannot be laws of nature, natural phenomena, and abstract ideas. Frequently, the opinion of a patent practitioner is very helpful in making this determination.

What is Novelty? An invention seeking patent protection must be new. In software patenting, there is a general guideline for what is new. If it has been done by hand previously, then it is likely not novel to write software to automate the process—it is obvious to create software to automate manual processes. In other words, when patenting software, if the software is doing something that has been done by hand, it is likely not patentable. The software then does not meet the novelty requirement.

Important Note: The particular problem of lacking novelty gets in the way of many software patenting applications. Seek professional patent practitioner help if this is not clear or if there are questions regarding software patents versus copyrights.

What is Useful? An invention must be useful; it must have a practical purpose. There are really only two limitations to usefulness: it cannot be illegal and has to be useful for something than mere refuse. Usefulness is not usually a barrier to patentability. Software running on a computer is doing something which is likely the use of the software.

What is Non-Obvious? The invention must not be obvious to a person having usual skill in the art at the time of filing. Because it is obvious to create software to automate manual processes, non-obviousness can be a barrier to patentability for new software inventions. New software that is a mere combination of existing software is likely not patentable unless it is, or is part of a device/apparatus that is, something more. Determining whether or not software is something more in the view of patent eligible subject matter is a complex subject. We highly recommend seeking the counsel of a licensed patent practitioner when determining whether the software represents something more.

What are the Disclosure Requirements?

There are formal and substantive requirements to file a patent application for software patent protection. When patenting software, you will need to disclose everything necessary to implement your invention. For software patent applications, disclosure does not generally require the submittal of any uncompiled code files; instead, how to assemble and implement the software must be disclosed. Check out our invention intake form.

Specifically for software, there are some disclosure areas to focus on when writing and filing a patent application. Creating flowcharts, diagrams, descriptions, and explanations of how to assemble and implement the software in the initial application is essential. Note that print outs of the code are not on the list. Patent applications have rather specific disclosure requires to support the claims. We highly recommend professional help with drafting and filing a patent application for a new software invention. Check out our patent dos and don’ts.

3 Software Patenting Tips

Software patent applications need extra focus and attention given to at least these three things:

  1. Concise flowcharts showing each step of the process;
  2. Detailed descriptions of the code (algorithms); and
  3. An explanation of how the software works with the hardware or machine.
Patent Attorney help with our 5 Steps to Patent

Software Patentability Requirements are Not the Same in All Countries

A patent granted in one country can only be enforced in the country in which it is patented. Therefore, if you want protection for your invention abroad, you will need to obtain a patent in each country in which you want protection. The Patent Cooperation Treaty (PCT) offers an international filing system. With a PCT, the applicant can submit a single application to all member countries. A PCT has the same effect as filing national applications in each of the member countries. Most countries are members of the PCT.

The laws and practices for seeking a patent differ from one country or region to another. For example, the European Patent Convention expressly excludes computer programs per se and methods of doing business per se; however, the United States has no specific exclusion.

Is Artificial Intelligence (AI) Software Patentable?

With the recent advancements of AI available to the general public, the interest in the technology has increased. AI patents cover a wide range of applications from AI algorithms and software to hardware systems that use AI to perform tasks. Generally, AI software inventions are considered to be eligible for patent protection if they solve a technical problem or improve the functioning of a technical system. However, there are some specific considerations to keep in mind due to the unique nature of AI technology.

 AI patents can be categorized into three main categories:

  1. Machine learning algorithms and models: These patents cover the development of machine learning models and algorithms that enable computers to learn from data and make predictions or decisions based on that data.
  2. AI software applications: These patents cover software applications that use AI technology.
  3. AI hardware systems: These patents cover hardware systems that use AI technology.

Machine Learning Algorithms and Models

Machine learning algorithms and models are a key area of AI technology and are used in a wide range of applications from speech recognition and image classification to fraud detection and recommendation systems. Patents related to this specific field of AI can cover a variety of inventions:

  1. New machine learning algorithms or models that enable computers to learn from data more effectively or efficiently;
  2. Improvements to existing machine learning algorithms or models that enhance their performance or accuracy;
  3. Novel applications of machine learning algorithms or models to solve specific problems or improve existing systems; and
  4. Hardware and software systems that use machine learning algorithms or models, such as data processing systems, sensors, and wearable devices.

AI Software Applications

AI software applications refer to the use of artificial intelligence technology to create software that can perform tasks that normally require human intelligence, such as natural language processing, image recognition, and decision-making. Examples of AI software applications include chatbots, virtual assistants, and recommendation engines.

AI software application patents can cover a variety of inventions:

  1. Novel software applications that use AI technology to solve specific problems or perform specific tasks;
  2. Improvements to existing AI software applications that enhance their performance or accuracy; and
  3. Novel uses of AI technology in software applications that were previously not possible or not practical.

AI Hardware Systems

AI hardware systems refer to physical devices that incorporate artificial intelligence technology such as autonomous vehicles, drones, and smart home devices. These systems and devices use AI algorithms and models to make decisions and perform tasks such as navigation, object detection, and voice recognition.

Patents related to AI hardware systems can include a variety of inventions:

  1. Novel hardware systems that incorporate AI technology to perform specific tasks or solve specific problems;
  2. Improvements to existing AI hardware systems that enhance their performance, efficiency, or accuracy; and
  3. Novel uses of AI technology in hardware systems that were previously not possible or not practical.

Can Software be Patented – Consult a Patent Attorney or Agent

We recommend you do not try patenting your software on your own. Keep in mind that you are the expert on your software, but we are here to help patent it. Read about how to write a patent application. Carson Patents offers all of our services for patenting software online.

There is a cost for professional patenting help. However, the benefits of seeking patent protection may very well be worth it. Be sure you check to be sure your patent practitioner (patent attorney or patent agent) is licensed by the USPTO to help you with the patent application for your invention.

Schedule a Free Patent Consultation with Patent Attorney Greg Carson

About The Author