Can I patent my software?
 

 

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Can I patent my software?

Quite possibly. You use patented software every day. For example, the .GIF graphics format, found on many websites (including the graphics above and to the left on this page) uses a patented compression algorithm, and anyone who puts out software that produces .GIF images has to pay a royalty to Unisys, the patent owner.

Would you like to see some actual software patents? Click here. Don't expect easy reading.

If you think there is a possibility that you have patentable technology, you need to make a decision about patenting it now. You should not put the decision off until you are successful, have more money, or more time. You must file a US patent application within one year of when you first commercialize your invention. In fact, if you have started selling your software you have already lost some foreign patent rights, but that's probably not as big a problem as you might think.

There are things you can do short of a full, "big deal" patent application that will put a stake in the ground if you think you have something patentable. It's simpler than a full patent application, but it's not trivial, and don't fall for the people who advertise that they will file something just as good as a patent for a reduced fee. It isn't. Mailing a description to yourself in a certified letter does not work either, contrary to a popular myth.

On the plus side, I believe one or more patents really increase the value of your company in an M&A transaction. Picture the money guy who is signing the check for your company. Sure, you claim your software is unique and the greatest thing since sliced bread, but so does every programmer. A patent tells him the US Government found some unique merit in your software, and that no competitor can spring up doing the same thing.

Here is some patent background information to get you started.

Strictly speaking, you don't "patent your software," you would patent one or more "inventions" (that might be embodied in your software). This is as opposed to, say, copyright, where what you copyright is your software (and manuals, screens, etc.) itself.

In order to be patentable, your "invention" must be useful, non-obvious and novel. You must be the true inventor.

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Useful is broadly defined. For example, a toy that amused a dog would meet the usefulness test. A mere curious outcome would not.

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Non-obvious is very tricky. The test is "would a reasonably skilled person who knew everything about this field be almost certain to come up with it?" For example, you could not patent "writing an accounting program in Java" even if it had never been done before, because any reasonably skilled programmer would realize it could be done. On the other hand, Amazon's 1-click ordering was held non-obvious by the patent office. Would any skilled web designer have thought of it? Quite possibly not. Apparently no one did.  (The patent may have some validity problems, and many people have criticized it as obvious, but it turns out no one actually thought of doing it before.)

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Novelty means you can't patent something that has been around for a while even if you thought of it independently and it has never been patented. "Been around for a while" is called "prior art" in patent-speak. The patent field has its own language.

Here, by the way, is the current state of Amazon's 1-click patent dispute with Barnes and Noble.

A misunderstanding of the difference between novel and non-obvious is what fuels a lot of erroneous party chatter about the sad state of patent affairs in America.

You must be the true inventor. It can't have been invented by your deceased grandfather (but the estate could file), by an employee (she has to file, and could assign it to the company you do have that clause in your employment contracts, don't you?), or you and an ex-girlfriend that you don't speak to anymore (she has to file the application too).

Hope this gets you started in your thinking. Of course, this article does not constitute legal advice. There are lots of variables and exceptions, and if you have serious patent questions, the right place to go is a patent attorney. Patent is a very specialized field. Patent attorneys must be members of a special patent bar, as well as their state bars. It's a very different legal field from trademarks and copyrights, and your "regular" attorney who helps with contracts and landlord issues will be almost certainly of little or no help. Here is an authoritative source of information, the United States Patent and Trademark Office Home Page. It includes a search form to help you find a patent attorney.

I've recently filed a patent application for software and a business method based on the software. If you are interested in talking, drop me a note.

Copyright 2002 Charles Mills