Is software patentable? 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 software. So, check to be sure your help is a licensed patent practitioner.
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 patent 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
What are the basic requirements to be eligible for patent protection?
When patenting software, there are five criteria. Firstly, the invention must consist of patent eligible subject matter. Secondly, it must be novel (new). Thirdly, the invention must be useful. Next, it must be non-obvious (i.e. involve an inventive step). Lastly, the disclosure of the invention must meet the formal and substantive requirements. A USPTO registered patent agent can help make these determinations for a software patent application.
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.
This particular idea gets in the way of a lot of software patenting applications. Seek professional patent practitioner consultation if this is not clear.
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.
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.
What are the disclosure requirements?
There are both formal and substantive requirements to file for software patent protection. When patenting software, you will need to disclose everything necessary to implement your invention. Specifically, for software patents, there are some disclosure areas to focus on. Getting good flowcharts, descriptions, and explanations in the initial application is essential. We highly recommend professional help with patent drafting and filing.
Software patent applications need extra focus and attention given to 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.
Consult a Patent Attorney or Agent when Patenting Software
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. 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. Check out our article about patent costs.
Disclaimer, nothing in this article constitutes legal advice.