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A Patent for Software


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: October 31, 2011 @ 8:17 pm
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Despite the protestations of some, software is patentable in in the United States.  There are some jurisdictions that do not allow for the patenting of software or computer implemented processes, but the law in the United States allows for software to be patented.

Given the software patents are my business, one of the questions I typically receive from an inventor is: What software can be patented? How does one know that what they have is something that can be protected?  The short answer is this: In my experience those who come to me before they start coding always have something that can be patented.  Of course we have to do a search and seek out the available space, but there are some many twists and turns that there is almost always something patentable. Unfortunately, some do the programming first and never approach the design as an engineering problem for which they have a unique solution.  That means no attempt has been made to identify the unique characteristics so what is programmed is many times virtually identical to the prior art.  It doesn’t have to be that way though.

When dealing with software and other computerized inventions you should view the innovation as a system that provides a desired set of functionalities.  If there is a uniqueness that you can identify you have something that can be patented.  You don’t have a bunch of code or compiled 1s and 0s, what you have is an innovation that provides desired functionality.  It is the desired functionality that will create market demand for your software, and it is those same functionalities that that lead to a patentable innovation.  Time needs to be spent to understand the unique value added and how to best characterize the invention.

Software is patentable in the United States provided that it is unique and tied to a machine. The “uniqueness” requirement mentioned is similar to the requirements for all inventions to be patented and is grounded into the patent laws by the novelty and non-obviousness requirements.  The “tied to a machine” requirement comes to us thanks to the Supreme Court and Federal Circuit decisions in Bilski. In a nutshell, what is required to obtain a patent is a unique process that is performed using a computer or similar device.  The requirement that the process be tied to some machine eliminates the possibility that a pure business method can be patented.  For those who really have software that is unique obtaining a patent in the U.S. is not difficult if you know what you are doing.

Difficult is really in the eye of the beholder, and saying that it is not difficult to patent software begs the an important question — what is software and what are we protecting?

I was recently reading a book sent to me titled The Software IP Detective’s Handbook, written by Bob Zeidman.  The book is generally about intellectual property for software, and more specifically about the field of software forensics.  At the beginning of Part II of the book Zeidman writes this about software, which is particularly elucidating.

Software consists of the instructions that a computer follows to perform a task, whether it is calculating the square root of 2, accepting input from a user, running a hotel elevator system, displaying a Web page, or searching the Internet…

Thus, software is what causes a computer to act.  Software is what breathes life into the computer and enables it to be something other than just an ornament for your desk.  Without software a computer just sits there.  With software it can do whatever it has been instructed to do. Software is different conceptually in patent terms from the code that makes up the set of instructions.  The code can be copyrighted, the invention (i.e., the software) can be patented.



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Zeidman explains the basics of computer programming this way:

The process of writing computer code, called “programming,” is a difficult task that typically requires years of education or experience.  Programming requires significant understanding of complex concepts in mathematics and computer science and a great deal of creativity.  There is a huge number of ways, perhaps even an infinite number of was, to write computer programs to perform any given task.  Some ways produce programs that run faster; other ways produce programs that run more reliably; other ways use fewer computer resources such as memory or electrical power.  Just as many novels can be easily described as “Boy meets girl, boy and girl fall in law, boy and girl die,” there is a big difference in the implementation if the author is Charles Dickens or Stephen King.

That there are an infinite number of ways to translate a desired set of functionalities into software is why you want to obtain a patent on the software, rather than rely on copyright protection.  With a patent you will be able to lock in exclusive rights with respect to any possible way the software is coded to accomplish what is recited in your patent claims.  This makes the rights obtained via a patent very different and far broader and stronger than the rights one can obtain in software from a copyright.  With a copyright you only get protection of the specific code, so to receive the same protection via copyright alone as is offered in a patent you would have to write the software in those infinite number of way and copyright all of them.  For this reason patent claims should focus on the core process steps and not discuss the software code.

Zeidman also touches on another important aspect of software, namely what is the uniqueness?  He explains that some software runs faster, is more reliable or consumes less memory or power.  This is the central advantage the software possesses and what absolutely needs to be protected.  This is what will make your software an innovation and not just a different version of something already done.  Software is patentable in the same way that machines and tools have always been patented.  You set out to do something better, faster, cheaper, easier or more reliable and frequently what you develop is something that is patentably unique.

Not sold on the idea of software patents?  Well what If you created an automobile engine that could deliver 500 miles per gallon of gasoline would you seek a patent?  I suspect you would because that type of engine would almost certainly be revolutionary.  So why wouldn’t you think about patenting a software system that more efficiently manages power consumption for a large office building?  If you could reduce energy consumption by 25% wouldn’t that be noteworthy?  Of course, and it should be patentable as well. Legally it doesn’t matter whether the advantage is created by an old world mechanical gadget or thanks to the constant monitoring and manipulation of parameters via a computer following instructions.  Both are innovations and both are patentable, and rightly so.

When I work with inventors I encourage them to conceptualize the project with an engineering mind set, not the mindset of a computer programmer.  Unless the computer program is an inventor the programmer should not be imparting patentable uniqueness to the software, but rather they are following the instructions, desires and goals of the project manager.  It is that set of instructions, desires and goals that are laid out for the programmer that are the innovation.

The laying out of the who, what, where, when, why and how associated with the overall structure of the system makes an inventor, and that is not the job of a programmer.  In fact, computer programmers are frequently given a task and they sit down and begin working on the task.  This is done in a project management setting where programmers are given discrete deliverables.  In this situation sitting down and starting isn’t so bad because the the task is small and manageable.  When the task becomes more complex the “let’s just get started” approach is not particularly helpful.  Jumping right in is a little like starting to tell a story and not knowing the morale you are trying to teach.  You should never meander through a software development project, and approaching a software patent without an overarching view of the system is a recipe for disaster.

The code written by the programmer will merely translates the innovation into something that can be performed on a machine.  The translation from design document to code is not unlike the translation from one language to another.  The act of translation does not impart newness, but rather just changes the form.  Thus, the typical code writer is not providing the mental conception that is required for innovation.  What this means is that most people have inventorship exactly backwards when it comes to software and computer implemented processes.  To be an inventor you do not need to know a stitch about programming.  You merely need to define what the overall system needs to do.  In essence you define the rules.

Which functionalities are unique and why? How does the rules 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. First work to uncover that which is unique and most likely patentable, and then set about working to get it protected — patented — so you obtain a valuable business asset.

For more information on this topic please see Software Patents.

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Posted in: Computers, Gene Quinn, Internet, IP News, IPWatchdog.com Articles, Patents, Software, Software Patent Basics

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

8 comments
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  1. Gene,

    A bit busy this week, but the keys to the Kool-Aid stand are under the mat.

    Happy sales!

  2. “Thus, software is what causes a computer to act. Software is what breathes life into the computer and enables it to be something other than just an ornament for your desk. Without software a computer just sits there.”

    Gene,

    If only SCOTUS had seen and accepted what you said here in Microsoft v. AT&T. Instead, the SCOTUS majority in that case “bought” Microsoft’s argument that software, such as Microsoft’s Windows, is “a detailed set of instructions – and thus might be compared to a blueprint (or anything containing design information.” Ugh! SCOTUS would have done better to consult the Federal Circuit’s decision in Eolas Technologies, Inc. v. Microsoft Corp. which referred to software doing more than simply providing a set of instructions, but instead as “drive[ing] the finished nucleus to the finished computer product.” Put differently, tell a pilot who relies on that software to control a B-2 in flight that software is simply a “set of instructions” or similar to an architectural blueprint.

    Here’s another inane statement from SCOTUS in Microsoft v. AT&T: “before software can be contained in and continuously performed by a computer . . . . an actual, physical copy of the software must be delivered by CD-ROM or some other means capable of interfacing with the computer.” The primary function of software is not that it is “performed by a computer” as you point out. Instead, it is the ability of that software to cause the computer to perform and operate according to the instructions supplied by that software. With inane statements like this from SCOTUS, no wonder people are confused about the patentability of software.

  3. EG-

    For the better part of a generation and a half SCOTUS has confused patentability for software. If only they appreciated how little they knew rather than acting like they know everything. I think that insular Ivy League club they have makes them more confident in their abilities than they should be.

    -Gene

  4. Gene,

    Did you see this petition to the WH to bar the patenting of software?: https://wwws.whitehouse.gov/petitions#!/petition/direct-patent-office-cease-issuing-software-patents/vvNslSTq . There’s a “lively” thread on Patently-O about this petition.

  5. Gene,

    Oh, before I forget, here’s my comment about that petition:

    “What a nonsensical petition, on par with the similar efforts to ban, for example, the patenting nucleotides and similar subject matter. All this will do is give carte blanche to the folks in India, China, etc., to copy at will our software innovations, import/sell them here with impunity, and drive more jobs offshore. Not a smart move if you care about American jobs.”

  6. A good summary of what is bad about the system of patenting software.

    You are advocating patenting before inventing. In which case the patent contains the problem to be solved, rather than a novel solution. To extend your contrived example, this means that an inventor should be able to patent a 500 mpg car without first having built one and ensured that the design really would obtain 500 mpg. By definition, then, the solution is obvious to a person “skilled in the art.”

    At this point, software patents are too often infringed upon by accident, or when we attempt to mimic the results we see (500 mpg, for instance). Meaning that, when posed with the same problem, two independent developers who are skilled in the art are capable of coming up with solutions which are indistinguishable to the layperson. The sheer volume of software patent litigation should be a clue that either A) software developers are constantly trolling patents to figure out how something is done, and therefore knowingly infringing, or B) the vast majority of these lawsuits are based on patents which are not novel, but are rather a logical next step, and therefore obvious.

    A question: What other IP is protected by more than one method (among copyright, patent, and trademark)?

    Software should be protected by an extended copyright (where derivatives, such as the binary derivative of compilation are covered) so that an investment is protected from unscrupulous direct copying. The current system obviously does nothing to stimulate sharing and innovation.

  7. Greyson-

    You say: “You are advocating patenting before inventing. In which case the patent contains the problem to be solved, rather than a novel solution.”

    You are simply wrong. The inventing is the conception (i.e., the mental activity). The mental activity is done by the person or people who create the rules and the overall architecture, NOT the people who take that and then write the code. Coding is not conception. The law is clear on that point and the law actually reflects reality 100%.

    I really don’t understand why you or anyone else wants to pretend that coding is something that it is not. Coders are very skilled, but we all know — if we are going to be honest — that when someone goes to a coder they lay out the project for that person. The coder asks all kinds of questions about what do you want here… when this happens what should be the result… in this situation how should this be handled… etc. etc. The answers to those questions are the conception. The answers provide the direction to the coder to translate into code. The coder follows directions. In the law the person that merely follows directions is NEVER an inventor.

    You want software to be protected by copyright because you are a coder and you do not imagine the innovation. You follow directions. So to you the black magic is the writing of the code.

    All of this is, of course, different with respect to the person who both conceives and codes. But we all know that the far more common situation is someone conceives and then seeks out someone who can code. If that person who does the code adds conception then they are a co-inventor. In my experience working with coders they do not co-invent. They won’t do anything without receiving an instruction or rule. No conception = No inventor.

    You ask: “What other IP is protected by more than one method (among copyright, patent, and trademark)”

    Intellectual property is best thought of as a web of protection. There is substantial overlap between various forms of intellectual property. A logo can be both copyrighted and trademarked. A device having a particular aesthetic appearance can be patented, it can obtain a design patent and portions could be copyrighted. The fact that you don’t realize this and believe software is somehow unique on to its own self shows that you are not all that familiar with IP. If you take the time to understand intellectual property law you will discover that software is not at all unique, and there is absolutely no reason for carving out a special software exception that allows folks who are lazy to simply copy without literally cutting and pasting.

    You say: “The current system obviously does nothing to stimulate sharing and innovation.”

    Truth: You are absolutely wrong again. Perhaps you should read http://ipwatchdog.com/2011/09/11/the-myth-of-the-sole-inventor/id=19090/

    Professor Lemley is hardly considered a patent apologist and his research proves the exact opposite. Facts are a real problem I know. They are going to get in the way of your otherwise uninformed conclusions if you actually allow facts and truth to guide you.

    I also invite you to read:

    http://ipwatchdog.com/2010/08/09/patenting-software-business-responsible/id=11509/
    http://ipwatchdog.com/2009/10/04/why-all-small-businesses-need-software-patents/id=6447/

    -Gene

  8. The sheer volume of software patent litigation

    The sheer volume that less than 1% of all current active patents are involved in litigation?

    That sheer volume?

    Have another swig of the Kool-Aid.