After graduating from engineering school, I remember speaking to my grandfather, who had worked as a chemical engineer for GE for his entire career after WWII.  He asked me the types of projects I was working on as an engineer and I informed him that I was developing software for various systems. His response? “Makes sense. That’s where all the action is.”  Well, as a patent attorney years later, I can still tell you that software is indeed “where all the action is.” This is evident in the significant increase in the number of software-related patents since I began drafting patent applications while working as an intern for a law firm back in 2005. Then, software-related patents accounted for just over 40% of all granted U.S. patents.  Almost 15 years later, the number of granted U.S. patents that are software-related stands at around 60% of all patents issued by the USPTO.

The fact that 60% of all patented inventions in 2019 are software-related is proof positive that software is the easiest way to solve problems and get people what they need. However, getting to this point has been a long process and one in which the rules of patentability are continually being challenged and changed. 

The Challenge of Patentability

Despite the obvious reliance on novel and non-obvious software-run devices, processes, and systems in technological development, there are still challenges for patenting software. For example, in 2014 the Supreme Court placed severe restrictions on the ability to obtain patent protection on software-related inventions.  Since that decision, the USPTO has produced numerous guidelines for determining whether software-related inventions should obtain patent protections. These guidelines have been helpful in providing patent attorneys with the tools to ensure their client’s software-related inventions may be protected with an issued patent. Some recent guidelines issued just last month in October, provide that software-related inventions pertaining to an abstract idea, are still patent eligible if these inventions are integrated “into a practical application”.  Prior protections for software-related inventions include the protection of software that improves computer functionality. For example, if your code enables a computer to process information quicker, make a display brighter, or process database information differently, these inventions will pass the patentable subject matter test and issue into a patent, as long as the invention is also novel and non-obvious. Today, a body of jurisprudence has been accumulated that allows us to counsel clients as to whether their software-related invention could be patentable under the current guidelines. 

Tips and Caveats: The Application Process

As mentioned above, there are three requirements to obtain a patent. Your invention has to be novel, non-obvious, and must comprise patentable subject matter. If you think you may meet each of these requirements, or just aren’t sure, here are a few recommendations to consider when determining whether seeking patent protection on your software-related invention is the course to take:  

  • Hardware components can help. The patent office typically sees a hardware/software combination as more patentable than software on its own, so developing a device, process, or system that incorporates hardware components into the invention can help ensure patentability, so long as the hardware is not simply a “generic computer” implementation.   
  • Consider a patent search. Though not applicable to the “patentability” determination, this will provide you with an analysis of whether your software-related invention is likely to be considered novel & non-obvious, based on the results of the search. 
  • Eyes wide open. Listen to the experts and understand whether a patent application is possible or even useful in your situation. 
  • Know when to file. Given the U.S.’s “first to file” requirement, you’ll want to file as soon as possible.  Preferably, this would include an initial provisional application filed as a proof-of-concept.  If development of the underlying software-related product is not complete at this time, filing a second application when initial development is finished (e.g., when you’re in beta-testing) is recommended.   
  • AI reduces your costs. Third-party AI systems can help draft your software-related patent application,  saving you money on legal fees in the application process. 
  • Focus on other market advantages. Relying on the novelty might not be enough. Timing, money, and your team will determine your success.  A patent is just a tool to get you there.    
  • Keep Developing. New products and features will give you a competitive advantage. They’ll also improve your chances of securing a patent if you continue to file. 
  • Don’t give up. Your first application may not issue, or it may be too narrow to provide much value. But if you continue to grow your business and get traction while continuing to innovate, you will produce something unique, valuable, and patentable. 

Develop a Strategy

After considering the above, establishing an IP protection strategy that your company adheres to will place you on a path of ensuring what should be protected, is protected, while allowing you to focus on creating and/or continuing a successful product and company.  A good business strategy may incorporate provisional patent applications, which were previously mentioned. Another option is to seek protection in an omnibus patent application. Although other options are available, one item that is not optional is timing. No matter where you, your team, or your company is within the development cycle, you should discuss your IP & corporate goals with a patent attorney so they can prepare for enforcement, defense against other enforcement, or even a future sale of the business, product, or IP.

As technology becomes increasingly essential to our lives, software innovations will grow exponentially and the patent landscape will continue to shift to accommodate these innovations. We’re still at the beginning of this seismic shift.