A patent protects the legal right of the patent holder to prevent others from using or profiting from his invention without his authorization. Although copyright law protects software, it is possible to patent software in the United States. Software patents are a type of utility patent. They are controversial because critics contend that they discourage innovation; in fact, many countries refuse to grant software patents. A utility patent expires 20 years after the patent application is first filed with the U.S. Patent and Trademark Office.
Perform a "prior art search" to make sure your software is original, because your software must possess "novelty" to be patented. A good place to start is the PatentScope search engine maintained by the World Intellectual Property Organization. This resource allows you to search abstracts of patent applications filed in many different national jurisdictions. Even if your software has never been patented, it might not be original. Check the U.S. Copyright Office website to see if identical or very similar software has been registered.
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Create a precise description of your software complete with text, drawings and diagrams, along with an explanation of why your software qualifies for patent protection based on the three principles of patentability: novelty, utility and ingenuity. Your description should be complete enough to allow a technician to manufacture it using only your description to guide them. To obtain a software patent, you must characterize your invention as a mechanical system in which computer hardware executes an algorithm, rather than an algorithm itself. If the USPTO concludes that you are trying to protect the algorithm itself, it will reject your application and refer you to the U.S. Copyright Office.
Prepare a one-page abstract of your software, summarizing its nature and function and stating why it deserves patent protection.
Navigate to the USPTO's EFS-Web page and file your patent application online. You must enter basic information and upload your abstract, specifications, drawings and diagrams. You must also execute an oath identifying the inventor, stating that you believe this inventor to be the first inventor, and promising to provide the USPTO any further information it might require to examine your application. You may pay the filing fee online by credit or debit card.
Respond to inquiries and requests for modification of your application by the USPTO. You may be asked, for example, to narrow the scope of your claims if the USPTO concludes that certain aspects of your invention are not original. Although the USPTO will publish a detailed description of your invention 18 months after your initial filing date, a final decision on your application might not be made for years after that.
Due to the controversy surrounding software patents, the law in this area is still evolving. Consider hiring an experienced patent attorney to help you prepare your application.
You can file your application by mail or hand deliver it, but it is more expensive and takes longer to process. At the time of publication, any regular nonprovisional utility application filed by mail or hand-delivery requires payment of an additional $400 fee called the “non-electronic filing fee,” which is reduced to $200 for applicants that qualify for small entity status under 37 CFR 1.27(a). Instructions for filing by mail and hand-delivery are available on the USPTO website.
- BitLaw: The History of Software Patents: From Benson and Diehr to State Street and Bilski
- Paul Graham: Are Software Patents Evil?
- U.S. Patent and Trademark Office: Process for Obtaining a Utility Patent
- U.S. Patent and Trademark Office: General Information Concerning Patents
- U.S. Patent and Trademark Office: Application for Patent
- U.S. Patent and Trademark Office: Oath or Declaration
David Carnes has been a full-time writer since 1998 and has published two full-length novels. He spends much of his time in various Asian countries and is fluent in Mandarin Chinese. He earned a Juris Doctorate from the University of Kentucky College of Law.