How to Patent a Software- Step by Step Guide

Software patents are granted in the United States of America but if certain criteria are fulfilled. One can get software patent, but there is a twist. Getting a patent for software per se is not possible. What can be patented is software which is tied to a machine. In Europe computer programs per se cannot be patented either.

If one desires to protect the software, copyright is the option. Copyright will protect only the computer program in the form written by a programmer i.e. its source code. It would not stop others from developing a code on the same idea, using same functions etc.

While opting for a patent protection one should also keep in mind the cost of filling patents and the maintenance fees which need to be paid regularly to enjoy patent protection. It would be wise to first know the market value the invention, before investing huge amount of money in getting a patent. Invention should promise some revenues in return.

Once decision on whether to get a patent protection or copyright is taken, assessment of invention needs to be done. To attain a patent the subject matter should essentially be a useful process, machine, manufacture or composition of matter. But laws of nature, natural phenomena and abstract ideas cannot be patented.

So the first and most crucial step towards obtaining a software patent would be to determine if the invention falls under the patentable subject matter. It is also important that the invention fulfills the basis criteria of getting a patent i.e. it needs to be useful, novel and non-obvious.

When we intend to protect software, we do not seek protection for the code itself but for the process performed by it. 

 An example would make it simple to understand.

Suppose you develop a code to be used in packaging industry. You intend to pack only a certain number of food items in a container. And you developed a code to stop putting more food items in the container once the pre-decided limit has been reached. In this case, the software patent would protect the process of detecting that the pre-decided limit of food items has been reached and stopping the system from putting any extra items in the container.

In United States patent law, the machine-or-transformation test is a test of patent eligibility. It states that a process can be patented if it fulfills certain criteria, i.e. it needs to be implemented by a particular machine or it should be tied to a machine in a unique and useful way. Also it should essentially transform an article from one state to another. This test is not used as a sole means to decide the fate of the invention but is used as a clue.

An important case study to understand the implementation of this test is Bilski v. Kappos. While deciding this case the supreme court had held that the said test could be used as only means to decide the patentability of the invention but it serves as a clue to determine if invention falls under  § 101.

Another interesting case study is Diamond v. Diehr. The applicants had filled for a computer implemented process for molding raw, uncured synthetic rubber into cured precision products. But the USPTO patent examiner rejected this invention as unpatentable subject matter under 35 U.S.C. 101. The examiner asserted that steps implemented by the computer were unpatentable. The Supreme Court differed in the decision and held the invention patentable.

It held that utilizing an algorithm for performing a step is different from an invention where protection is sought for only the algorithm. Therefore, the invention should be considered as a whole while deciding upon criteria of patentability search. If a computer program or an algorithm is used to transform an article from one form to another, it falls under patentable subject matter. Mere use of a software code or algorithm cannot render it unpatentable (falls in line with the machine-or-transformation test).

Alice Corp. v. CLS Bank International is another case which is considered to be a landmark case in patent eligibility considerations. The case clarifies that what could possibly be considered as an abstract idea. The claims of the Alice Corporation patents which were based upon the financial trading between two parties, who exchanged payments which were settled by a third party, were held to be invalid.

Once the inventor passes all the said hurdles, the next step would be to ascertain if the invention is already present in the public domain or not. This can be done by performing a prior art search. This search would enable the inventor to make sure that the invention is indeed new and the analysis of closely related patents or research paper would help the inventor to decide upon the points which make his or her invention stand out from the inventions that are already known.

One can seek Patent protection either by filling a provisional or non-provisional application. Provisional applications are cheaper to file and give benefits of securing a priority date. A non-provisional application can be filled within 12 months of filling a provisional application. Filling a provisional application delays the whole process of applying for a patent by 12 months. This time can be utilized for assessing market value of the invention or can be invested in preparing the non- provisional application.

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This article is contributed by Sameer Goel who is an author and associate vice president of TT Consultants. This is a certified firm, providing high quality Intellectual Property and patent search services. For more updates you can also follow them at their LinkedIn page for more updates.