|Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: November 1, 2011 @ 12:20 pm
Last updated April 22, 2013
In the United States software is patentable. 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.
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:
- A Guide to Patenting Software: Getting Started
- Writing Software Patent Applications
- The Information Needed to Avoid Writing Bad Software Patents
- Software Patents and Murphy’s Law: Uncertainty is Where Patentability Resides
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
- Software Patents: Drafting for Litigation and a Global Economy Apr 30 2013
- Designing Into the Path of Disruptive Technology: An Interview with Software Expert Eric Gould Bear Apr 28 2013
- Writing Software Patent Applications Apr 20 2013
- A Guide to Patenting Software: Getting Started Feb 16 2013
- An Examination of Software Patents Nov 30 2012
- Building Better Software Patent Applications: Embracing Means-Plus-Function Disclosure Requirements in the Algorithm Cases Jun 18 2012
- Federal Circuit on Software Patents: Show Me the Algorithms Apr 09 2012
- A Patent for Software Oct 31 2011
- Patenting Business Methods and Software in the U.S. Jul 18 2011
- Patent Drafting: Defining Computer Implemented Processes Mar 14 2011
- Business Methods: Concrete & Tangible Description a Must Nov 04 2010
- Beware Open Source Strings Attached if You Want a Patent Oct 12 2010
- The Information Needed to Avoid Writing Bad Software Patents Sep 09 2010
- Patenting Software: The Business Responsible Thing to Do Aug 09 2010
- Who Owns Software Copyrights? Jun 29 2010
- Dissecting Bilski: The Meaning of the Supreme Patent Decision Jun 29 2010
- Supremes Decide Bilski: Machine or Transformation Not the Only Test, Bilski Not Patentable Jun 28 2010
- The History of Software Patents IV: State Street Bank Jun 25 2010
- Debunking the Software Patent “Pen and Paper Myth” Apr 14 2010
- Software Patents and Murphy’s Law: Uncertainty is Where Patentability Resides Mar 29 2010
- Deciding Bilski on Patentable Subject Matter is Just Plain Wrong Feb 21 2010
- Beware Those Claiming Software Patents Are Unnecessary Jan 13 2010
- Bilski Arguments Complete at the US Supreme Court Nov 09 2009
- History of Software Patents III: In re Alappat Nov 01 2009
- Jobs and Apple Seek Patent on Operating System Advertising Oct 22 2009
- Open Source Success Must Embrace Proprietary Features Oct 20 2009
- Why All Small Businesses Need Software Patents Oct 04 2009
- Software is the New Engine and Must be Patentable Jul 02 2009
- How to Patent Software in a Post Bilski Era Jun 29 2009
- Bilski Not So Bad for Software Patents After All May 19 2009
- Open Source Race to Zero May Destroy Software Industry Apr 02 2009
- History of Software Patents II: Arrhythmia Research Apr 01 2009
- The History of Software Patents Jan 24 2009
- Battle Between Software Patents and Open Source Jan 23 2009
- Obama Wants Open Source IT Solutions for US Jan 22 2009
- Why Not Allow Software Patents? Nov 14 2008
- Defining Computer Related Inventions Sep 16 2008
- Writing Software Patent Applications Aug 31 2008
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
Zies, Widerman & Malek
B.S. in Electrical Engineering, Rutgers University
J.D., Franklin Pierce Law Center
L.L.M. in Intellectual Property, Franklin Pierce Law Center
Send me an e-mail
Gene is a US Patent Attorney and the founder of IPWatchdog.com. Known by many as “The IPWatchdog.” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors.Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.