Yes. Patenting software is the same as patenting anything else. In addition, it can all be done online from the comfort of your home or workshop. The software patent application is the usual application. The complex nature of the requirements means you might want professional help. Only patent attorneys and agents can help with patenting your software. So, check to be sure your help is a licensed patent practitioner.
Why is it possible to apply patent law to software? Software Patents are regular patents. They need all the usual information and materials. They must meet all the usual criteria for patenting. In particular, software patenting applications need extra focus and attention given to three things. Firstly, good flowcharts showing each step of the process. Secondly, detailed descriptions of the code (algorithms). Thirdly, a good explanation of how the software works with the hardware or machine.
The first step is to determine what is the core of your innovation. How does the software interact with the hardware? How does the software process data? Is it a method? A system? An apparatus? A network? Is it the processing of data or perhaps even the software itself?
Basic Requirements to Patenting Software
The basic requirements are that the software be patentable and a patent application is filed, prosecuted, allowed, and issued.
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. Firstly, the invention must consist of patent eligible subject matter. Secondly, it must be novel (new). Thirdly, the invention must be useful. And, fourthly, it must be non-obvious (this is similar to the international application requirement that the claims involve an inventive step).
It is highly recommended that you seek the counsel of a USPTO registered patent practitioner to make these determinations for a software patent application and for assistance in writing and filing a patent application for your new software. Software patents are generally written in the form of method claims to capture the features and uses of the software. The legal cases of Myriad, Mayo, and Alice have altered long held approaches to protecting new software applications.
If a software invention has claims that meet all four patent eligibility requirements, then a complete and proper disclosure of the invention, meeting all of the formal and substantive requirements, is filed, then a patent can be obtained for a new software invention.
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 directed to these three things: laws of nature, natural phenomenon, 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, it is not likely 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 not likely patentable. This is because it does not meet the novelty requirement.
Important Note: This particular idea of linking novelty gets in the way of a lot of software patenting applications. Seek professional patent practitioner consultation if this is not clear, or there are questions regarding software patent vs copyright.
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, likely as not, that is 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 not likely 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 both 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 this does not generally require the submittal of any uncompiled code files. Rather it is how to assemble and implement the software which 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. Getting good 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:
- Firstly, good flowcharts showing each step of the process need extra attention.
- Secondly, detailed descriptions of the code (algorithms) also require more attention to detail.
- Thirdly, a good explanation of how the software works with the hardware or machine should be focused on as well.
Software Patentability Requirements are Not the Same in All Countries
A patent granted in one country can only be enforced in that country. So, 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.
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.
Can Software be Patented – Consult a Patent Attorney or Agent
We recommend you don’t try patenting your software yourself. Keep in mind that you are the expert on your software. Coming up with a good new invention is your thing. Drafting a good patent application is our thing. Read about how to write a patent application. Carson Patents offers all of our services for patenting software online.
When patenting software, good patent application drafting is very important for at least these two reasons. Firstly, once filed, making amendments to the description is difficult. Amendments cannot not include new matter. New matter is not allowed. Claims must be supported by the original specification. So, it is important to be complete and accurate the first time. And secondly, getting a software patent requires appropriate claim construction. There are many proper claim construction rules. Claim construction often requires professional help.
There is a cost to professional help. However, the benefits in seeking patent protection may very well be worth it. Be sure you check to be sure your patent professional is registered by the USPTO.
