Essays Software Patents

Software Patents


Last updated February 17, 2018

In the United States software is patentable, and recent decisions from the Federal Circuit are providing new hope that hasn’t existed in the industry for years.

We typically refer to such inventions as computer implemented processes, but in the end it is software that is being protected.  Software can be protected in the U.S. if it is unique and tied to a machine. Most importantly, to be patented software really needs to offer some kind of identifiable improvement. Merely doing something that is known on a computer is extremely unlikely to be patentable.

The “unique” requirement is a short-hand way of saying it must be novel and non-obvious, which are core patentability requirements for any invention.  The requirement that the process be tied to a particular machine is not really much of a limitation if you really have a computerized process, but it is there to make sure that whatever protection you do ultimately obtain will not extend to so-called “pure business methods.”  In other words, you cannot patent a process done in your head, but if that process leverages a tangible machine, such as a computer, now you have something that is patent eligible and which will receive a patent if it is described properly and is unique.

When dealing with software patents the process we follow is rather straight forward; we view the innovation as a system that provides a desired set of functionalities.  We work with clients to consider the project with an engineering mind set, which requires understanding of the overall design, but also requires more detailed understanding. We first want to start out with the broad vision and then drill down to the specifics, which allows us to protect the broadest aspects of the invention as well as the specific features and implementations. This leads to the strongest, broadest software patent that can be obtained.

Which functionalities are unique and why? How does the rules engine implementing those core functionalities handle and manipulate information? Because human actors will interface with the system we can anticipate mistakes and errors, so what compensation is integrated to address this inevitable human element? What problems are solved by your solution and how is this more advantageous than any other known solutions? Uniqueness can and will reside in many places when dealing with software and computer process related inventions. We first work with you to uncover that which is unique and most likely patentable, and then we set about working to get it protected — patented — so you obtain a valuable business asset — a software patent that provides a meaningful foundation to build on.

I always recommend that inventors seeking software patents start with a patent search. Typically there is always something that can be patented, it is just a matter of finding out what is unique and how to describe it to accentuate the uniqueness of the invention. Ultimately, the question is usually whether the patent claims that can be obtained will be broad enough to warrant the time, money and expense associated with obtaining a patent.

When I do a patent search for computer related technologies and software inventions are comprehensive and employ a multi-phase search. This allows us to learn more about the invention little by little in context of the prior art we locate. We work together with the inventors in a cooperative approach. By the time the search process has concluded the inventor will have a 5-7 page single spaced detailed assessment, a complete patent search report detailing everything that was located and we will thoroughly understand the invention and likelihood of obtaining protection. This approach allows for a much more detailed patent application. For more information about our patent search process please see Patent Search FAQs.

We work to envision the system from three distinct views, all of which are described in the software patent application. Specifically we approach the software patent application: (1) from the view of the end user; (2) from a systems/architecture view; and (3) from the viewpoint of the computer.  To get a sense for this, and why it is important, I strongly recommend reading these few articles:

I always recommend my new clients read at least these articles to get an idea about the project, what information I will need and how we approach the overall task.  The more you understand about why we need what we ask for the better the results.  It will make you a better inventor because you will be more in tune with what information is required and it will help you to identify a great many things that are likely capable of being protected that you never considered as patentable.

If you need assistance with a software patent, Internet technology or computer device send me an e-mail.  My firm and I have quite a bit of experience with software patents and related technologies, and I even have my own software patent application pending on a computer implemented process, so my interest in this area is both as a legal representative and an inventor.

From the IPWatchdog.com Blog

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Basically I remain convinced that the patent policy most fair and most suitable for the world will regard mathematical ideas (such as algorithms) to be not subject to proprietary patent rights.
— Donald Knuth

A strange game. The only winning move is not to play.
— War Games (1983)

These patent plaques hang next to me on my study wall. They were sent by the law firm of a previous company. I don’t think that’s typically done, but I’d been very accessible to them while the patents wound their way through the U.S. Patent & Trademark Office. Since some of them took ten years to issue, I had long since moved on and they appreciated my helpfulness. As a reward, I received these plaques and the patents were sold to an unrelated software company in the midst of a patent dispute with another multi-billion dollar software company. Good times.

I am a listed inventor on more than twenty issued patents. My rough estimate is that my name appears on at least another twenty-five applications—in varying stages of review—that have yet to issue [1]. Although I’m immensely proud of the products that hatched these patents, I’m not as pleased with the patents themselves. I’m not sure I even understand them when I read them. They represent work done years, even a decade ago. In each of these cases, my companies filed these patents as a defensive maneuver. We patented them so nobody else would. More importantly, we patented them so nobody else would patent them and then sue us. Every patent accumulated into the war chest also serves as a deterrence in the mutual assured destruction of the software industry. (Update 3/3/2012: one of my former employers, Yahoo!, has just broken that implicit promiseUpdate 7/6/2012: buteventually settled.)

I’ve come to the conclusion that software patents should go away. Not just mine, all of them. And I’m not alone. A significant number of software engineers, entrepreneurs, and venture capitalists in Silicon Valley share my opinion. From NPR’s This American Life:

That same afternoon, we talked to a half dozen different software engineers. All of them hated the patent system, and half of them had patents in their names that they felt shouldn’t have been granted. In polls, as many as 80 percent of software engineers say the patent system actually hinders innovation. It doesn’t encourage them to come up with new ideas and create new products. It actually gets in their way.

Every moment and dollar that we spend filing patents, reviewing patents, responding to litigation, and fighting in the courts (hello Tyler, Texas!) is one spent not building something for people. Programmers and software companies aren’t the losers, you are. The consumer.

Again, from This American Life:

That’s $4.5 billion [paid by Apple and a consortium of other tech companies] on patents that these companies almost certainly don’t want for their technical secrets. That $4.5 billion won’t build anything new, won’t bring new products to the shelves, won’t open up new factories that can hire people who need jobs. That’s $4.5 billion dollars that adds to the price of every product these companies sell you. That’s $4.5 billion dollars buying arms for an ongoing patent war.

I hold no illusions that the courts will fully invalidate software patents. But I believe that with time, we can slowly chip away at them.

I’ve devoted my career to building products for consumers. I’ve had some successes and some spectacular failures. That’s how it works. You compete in the marketplace, by innovating and building something that matters. If you lose, you try again or you do something different. You take what you learned and make something better. That’s the spirit of Silicon Valley. It brought you the microchip, the personal computer, the smartphone, the tablet, and the web.

Someday my grandchildren will ask me what those plaques are. I hope to tell them that they were called “software patents.” I intend to explain that they once meant a great deal to a lot of people, but today they are worthless, like Confederate currency or WWII uniform insignia. And like those historical artifacts, we keep them around not because they have value, but because they remind us that human progress thrives on execution, not ideas.

This represents my personal opinion, and not the opinion of my employer. The views expressed are mine alone. The fact that I need to clearly state this, coupled with the apprehension I feel even typing these words, should give you a sense for how messed up intellectual property law has become.

Notes

[1] Don’t research or read my patents. Seriously, don’t read any patents if you’re a software practitioner. Don’t read news articles about patents. Don’t discuss patents in email or in any recorded medium. Familiarize yourself with the Debian Project’s excellent Patent Policy FAQ for more advice. In particular:

Are you suggesting that it is better for developers and contributors not to read patents? If yes, why?

Yes. Unfortunately, U.S. patent law creates disincentives for searching through patents, even though one of the main justifications given for the patent system is that the patent teaches the public how to practice an invention that might otherwise be secret. Willful infringement subjects the infringer to enhanced damages when they are aware of the patent and intend to infringe, and reading patents increases the probability that subsequent infringement will be found to be willful. Moreover, we find that developers often assume that the patents they discover are broader in scope than they actually are, and thus such developers become overly or needlessly worried. If, despite this, you do intend to conduct a patent search, you should seek legal advice first.

Originally published: August 2, 2011

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