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Software Patents

Year over year, the process of successfully obtaining a software patent has become more difficult. This shift is due to legal interpretations that are unfavorable to software inventions. Managing to navigate through these changes in the legal landscape, while simultaneously handling the other complexities of a patent application is a doubly daunting task. You need a potent combination of technical and legal expertise to succeed. Patent Ingenuity possesses that rare mix of technical and legal knowledge. With it, we can emphasize the technical aspects of our software clients’ inventions so that a patent application comports with the specific legal requirements particular to software patents as dictated by the United States Patent & Trademark Office (USPTO). The process typically can be summarized in this format:

  • Technical liaison: To begin with, a USPTO registered patent attorney in possession of a familiarity with the client’s specific software technology will coordinate with engineers. The goal of this contact is to gain a solid grasp on the particulars of that technology. The patent attorney, typically, will have a software engineering background and be able to effectively discuss the patentable invention with the client’s software engineers. Once the patent attorney fully understands the invention, this knowledge will be distilled into easier-to-comprehend concepts. These concepts will be used to communicate the invention’s purpose to the Patent Office. They may even be of use to help communicate the idea to the client’s management team, depending on their technical knowledge.
  • Software patent application: leveraging years of experience, the assigned USPTO registered patent attorney will prepare a software patent application. This application will be submitted in the idiom that the patent attorney has learned is most successful in conveying the concept of the invention to the Patent Office and avoiding or minimizing software patent legal hurdles.
  • Coordinating with the Patent Office: the patent lawyer then communicates with the Patent Office through a series of written and/or verbal communications. The objective is to advocate for allowance of the software patent.

Can You Patent Your Software?

There is a two-part test that the USPTO and US courts have used since 2014 to assess whether software patent claims have the requisite subject matter to be patent eligible.

  1. Are the claims at issue directed to an abstract idea?
  2. Do the claims contain “an inventive concept” sufficient to “transform” the claimed abstract idea into a patent-eligible application?

In isolation, an abstract idea implemented on a generic computer is ineligible to be patented, according to the US Supreme Court. Many cases hinge on the first factor. That is, does this computer program implement an abstract idea? There are examples of what constitutes an abstract idea in this instance: mathematical formulas and relationships, particular methods of organizing human activities, even basic economic practices. However, with more robust guidance unavailable, it is difficult to determine which ideas the USPTO and the courts will deem sufficiently ‘abstract’. Therefore establishing which ideas are likely to be found eligible for patenting can be very trying.

One area of software that is clearly patent eligible in spite of recent legal shifts is software which influences the operation of a computer itself. Software that increases the speed or security of a computer is generally able to be judged on its merits. Essentially, a process that can feasibly be done entirely in your head is not patentable. If the process leverages a tangible machine (e.g. a computer) in a manner that cannot be reasonably performed with mental steps, there is more of a possibility of it being patent eligible, and possibly allowed by the USPTO as a granted patent.

Protect Your Software Innovation with Patents

As Congress, courts, and the USPTO are presently grappling with the murky complexities of patenting software, having a quality, thorough software patent application is more important than ever. A provisional patent application that lacks detail, or even a utility patent application that is not written to comport with software patent guidelines at the given moment, will typically not suffice anymore for obtaining a granted software patent.

Companies may be tempted to observe whether their competitors’ patents are invalidated under the two-part test when they were previously accepted. Litigation or patent office proceedings can bring up formerly established patents and render them suddenly ineligible.

When you are considering the software you wish to patent, look at it like you’re an engineer. Define its overall design, down to a fundamental level. Answer these questions:

  • What’s unique about my software?
  • What is my software’s desired function?
  • How does the software handle information?
  • What does its user interface look like?
  • What problems does my software solve?
  • Which parts of the program do I want to protect with a patent?

Successfully navigating the patent system means being able to shift your perspective on your invention and what it represents. You should be able to look at it as an end-user, as a computer, and as an analyst viewing it systematically and architecturally.

Everything You Need to Know About Software Patents

Solid software patent applications contain both a description of the system in which your software works, and diagrams to provide general overviews of how your software works. The role of a patent lawyer is to go through each step of the application for you, since you likely do not have the time to deal with all the complexities of the patent process. In particular, a patent attorney’s help when drafting the application is essential. After filing the application, changing it is very difficult. Working with an experienced patent law firm like Patent Ingenuity makes it more likely that your application will pass USPTO muster. It’s important to know that you do not need to wait until the software is completely coded before initiating your patent application. As far as the USPTO is concerned, code is a language. The functionality and architecture are what you need to convey, not the minutiae of the code.

Securing a Patent Portfolio

Getting one software patent is typically not enough to meet a company’s goals. In this age of fast-paced innovation, competitors are constantly trying to one-up your software invention with systems that are faster and more robust. The only way for you to keep up and stay ahead of the game is clear: keep innovating and patenting your ideas.

By developing a portfolio of patents, you can “fence in” the inventions that define your company. As a result, your patents will not be disconnected one-off inventions, but rather a symbiotic family of innovations that synergistically work together to take you to, and keep you at, the forefront of your technological field.

Yet, crafting such a patent portfolio is not an easy task. It takes strategic guidance from a USPTO registered patent attorney that sees the big picture, but that also has an in-depth understanding of how your company’s different innovations are intertwined and how are they are not. Patent Ingenuity is a patent law firm that does both: we get into the weeds with your engineers, and we also work at a high level with your company’s management to not lose sight of your company’s overall business objectives.

Choose Patent Ingenuity to help you craft a strong and robust patent to deter infringement of your company’s rights. Whether you are looking to patent your startup’s IP, or are a stakeholder for the patent portfolio for a larger enterprise, our legal expertise is a definite asset. Contact us today to find out more about our legal services.


Just because a patent attorney has prepared a patent application doesn’t mean that the patent attorney has actually gotten that patent application issued into a granted patent.