Patenting Software

Can software be patented? Patenting software, is the same as patenting anything else, and, it can all be done online from the comfort of your home or workshop. The complex nature of the requirements means you might want professional help. Only patent attorneys and agents can help with patenting software (or anything else for that matter). 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?

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. Fourthly, it must be non-obvious (i.e. involve an inventive step). Lastly, the disclosure of the invention must meet the formal and substantive requirements.

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. Firstly, laws of nature. Secondly, natural phenomenon. Lastly, 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 new.

In other words, if the software is doing something that has been done by hand it is not patentable.

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. A practical purpose. Something not illegal.

What is non-obvious?

The invention must not be obvious to a person having usual skill in the art at the time of filing. If it has been done by hand it is obvious to create software to do it.

What are the disclosure requirements?

There are both formal and substantive requirements to file for patent protection. Generally 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. Secondly, detailed descriptions of the code (algorithms). Thirdly, a good explanation of how the software works with the hardware or machine.

Software Patentability Requirements Are Not The Same in All Countries.

A patent granted on 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. Here is an example. The European Patent Convention expressly excludes computer programs per se and methods of doing business per se. But, 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.

Good patent application drafting is very important – for at least these two reasons. Firstly, once filed, making amendments to the description is difficult. Amendments are generally viewed as new matter, and new matter is not allowed. Note: any revision in 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 are usually well worth it.

Disclaimer, nothing in this article constitutes legal advice.

Gregory D Carson Patents is verified by the U.S. Department of Veterans Affairs (VA). We are verified by the VA as a Service-Disabled Veteran-Owned Small Business (SDVOSB) . We are listed on the VA’s Vendor Information Pages (VIP) at https://www.vip.vetbiz.va.gov/.

Patenting Software Online 🤙909.215.9091. Remember only patent attorneys and agents can help with patenting software or anything else.

What is a 188 Claim?

A 188 Claim, is a claim (application) for a patent for your invention. It is the filing of the necessary documentation of your invention to apply for a patent.

When I was studying for the USPTO Patent Registration Exam, I was fascinated by the fact that our Constitution was the source of the law that gives us the right to claim a patent. The ‘188 Claim’, is my shorthand version of a reference to a single sentence that is at Article I, Section 8, Clause 8 of the United States Constitution. That sentence reads, “To promote the Progress of Science and useful arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

While this special sentence also speaks to copyrights, because I was focused on getting my registration as a patent agent, I always treated my shorthand ‘188 Claim’ as a patent thing. It does not seem inaccurate to use the 188 Claim idea for copyrights, but to me it has always been about claiming your right to a patent.

Your right to a patent (if allowed) is your right to control the making, using, and selling of your invention. To me, this is a powerful thing, and thus it deserved a simple easy to remember shorthand. Since the more formal version of shorthand for the reference to that special sentence in the Constitution is I.8.8., and 188 is so much faster and easier to write, my shorthand note for filing a patent application became the ‘188 Claim’.

Thus, the 188 Claim was born.

Get a consultant to help with your invention or patent online. Contact Carson Patents. About our company: Software Experienced. Electrical Engineering. Mechanical Engineering. Biomedical Engineer. Patent Agent. Get a quote for help to file to protect your invention. We can represent your patent and work with the USPTO for your invention. Confidential, Privileged Communication. Online Service: Patent Help. Prior Art Searches. Patentability, Novelty, and Prior Art Reviews. Contact us to apply for the patent to protect your invention, or idea. Online help filing US and International Patent Applications is here.

Patent Agent Legal Services

What Legal Service/Advice can you get from a Patent Agent, and is it Confidential/Privileged?

Patent Agent Legal Services? When it comes to legal rights, in pertinent part, property rights, there are licensed professionals who offer help in exercising or protecting your rights. Lawyers. For patents there are patent practitioners (agent or attorney) to deal with these special rights.

Patents are Intellectual Property and need a Patent Practitioner not an Attorney:

Patents are a kind of property, specifically intellectual property. A patent, the legal right claimed under Article I, Section 8, Clause 8 of the US Constitution. A patent is the right to prevent others from making, using, or selling your invention. Property rights are your rights to enforce. You can do this yourself, but usually it is far more effective and efficient to hire a professional as the patent laws are complex and detailed. An improperly filed and/or drafted patent application may prevent you from asserting your rights against potential infringers.

The professionals that deal with personal property, real property, and intellectual property are lawyers, with one exception. Among the bundle of intellectual property rights are patents. The USPTO issues patents, and registers professionals to practice before the office. Being a lawyer does not permit them to practice before the USPTO. Registration requires a separate application and examination process. To be allowed to communicate with the USPTO (“prosecute”) on a client’s behalf regarding a patent, an attorney needs to take an additional bar exam.

Patents need a Patent Agent or Patent Attorney:

Only those licensed to practice before the USPTO can prosecute a patent. Only patent practitioners (patent agents and patent attorneys) can prosecute patents; non-patent attorneys cannot. Whether a patent practitioner is agent or attorney is determined by whether they are a member in good standing of some state’s legal bar. In other words a lawyer. Thus, while patent agents prosecute only patents, patent attorneys can also prosecute other legal rights.

Legal Advice on Patenting comes from Patent Agents or Patent Attorneys:

Patent agents are not authorized or licensed to give legal advice in general. With that said, the US Supreme Court has held that patent agent activities incident to the preparation and prosecution of patent applications, even beyond the representation before the USPTO, like advising on potential patentability of an invention is permitted.

Patent agents can give legal advice during the drafting and prosecution of patent applications. However, this is not open ended. The usual forms of this legal advice are opinions on prior art, novelty, patentability, patent validity, and infringement. Patent agents can help with ownership and licensing by clearing up legal misconceptions about patents and recording assignments. Patent agents can also handle reexamination proceedings before the USPTO if the prior art shows that the claims should be narrowed or cancelled.

For stuff like Infringement Lawsuits, you need an Attorney:

However, for some patent related matters like lawsuits for infringement, assignments, or employer/employee rights, you should discuss these things with an attorney who specializes in that area. Your best attorney choice may not be a patent attorney. I maintain relationships with attorneys I trust should you need to engage an attorney and need a referral.

Communication with a Patent Agent is Confidential (i.e. covered by client controlled privilege):

The advice and interaction with a patent agent is covered by the same confidentiality standard as an attorney. Client communication is held in confidence and is protected under privilege. Patent agents hold the same basic professional liability insurance as that held by attorneys, just limited to the practice of patent prosecution.

Gregory D Carson, Patent Agent