Selected Papers

A Brief Overview of
Patent Protection for Software

Software Generally - 1998

When this paper was first written in the early 1990's, there was still a great deal of confusion in the software industry over the exact status of the patenting of computer software. Since that time, USPTO guidelines issued in 1997 have shed quite a bit of light on the patentability of software. Now, you can even claim a storage device holding a new and useful software program, and even a data structure or signal in certain circumstances. The courts have yet to weigh in on these types of claims, but in the mean time, they appear to be the best way to claim software in order to allege direct infringement by the software maker.

The vast majority of software inventions are in the realm of industrial technology, such as a computer-controlled carburation system or a flight-control system. In most of these inventions, software is a substitute for what previously was accomplished using electronic circuits. In these cases, the line between electronic and software implementation is fluid, and depends on factors such as cost and performance. Patenting of these inventions is typically approached in a traditional manner.

In other cases, software inventions are mixed up with some other underlying development. For example, a method of medical treatment or diagnosis may entail the use of software to filter or analyze data. Since the focus of development is often on the software, the inventor mistakenly believes that the invention is a software invention. These cases, however, are often patented not in terms of the software performance, but in terms of the overall process. For example, a method of medical treatment may include one step of the process which is performed by analyzing data, but which is not necessarily limited to analysis by a computer program (such analysis could, for example, be performed by a special purpose electronic circuit). Another example of this type of invention might be a new method for controlling the head of a disk drive. Although the control might be effected using a computer program, the invention would comprise a method for moving the head without reference to the computer program.

Within the software publishing industry, software inventions are usually thought of more narrowly, usually as something that pertains only to use or operation on a personal computer or other general purpose computer. Examples of such inventions include: word processor inventions; electronic spreadsheet inventions; operating system inventions; database system inventions; and software tool inventions.

Mathematical Algorithms

Mathematical algorithms are not patentable, unless properly "applied." A "mathematical algorithm" is a formula or step-by-step procedure to solve a mathematical problem, wherein one or more numbers are produced from one or more other numbers. Merely comparing two numbersor other such procedures are not mathematical algorithms.

Determining when an algorithm is or is not properly "applied" so as to permit it to be part of a patented invention is often difficult. A couple of examples may help give a feel for when an algorithm is applied. A mathematical algorithm used in a data compression process, for example, is "applied" because data compression is a recognized statutory type of process. On the other hand, using a mathematical algorithm in accounting software will not be properly applied if it merely calculates a new balance or other number which does not control the flow of the software.

Software used in Method of Doing Business

Methods of doing business are not patentable. However, machines and apparatus used in business are. For instance, a cash register is patentable, even though it is used in business. Paine Webber obtained and successfully enforced a patent on a system of moving funds into different accounts depending on certain predetermined algorithms. Software used to create and print coupons is another example of software that is of a patentable nature even though it is used as part of a method for doing business. Still another example might be a computer program and database which is designed to help match home buyers with home sellers.

Identifying Valuable Inventions

In general, the most valuable inventions are those that your competitors seek most aggressively to copy. Unfortunately, it is often hard to know this at the time the decision to file must be made. Inventions which may establish or modify a standard are also valuable, since even if narrow in scope, competitors will need them to maintain full compatibility with the standard.

Inventions made in the course of dealings with another entity also can be quite valuable, particularly where the other party attempts to or does adopt the invention, as if it were the inventor when such is not the case. Having a patent in this situation can give a smaller developer leverage in their dealings with a much larger company that would otherwise not exist.

"Broad" or "pioneering" inventions are usually more valuable than "narrow" or "incremental" inventions. However, very few inventions are truly pioneering. The breadth of coverage available for an invention is assessed by a review of the prior art.

Inventions which cannot be protected as trade secrets are better candidates for patent protection than those that can. Inventions which satisfy a long-felt need or solve a difficult problem are usually good candidates for patent protection.

Finding inventions in a software product can be difficult at times. In many cases, there simply aren't any good inventions in a new product, even if it is a major new release. Sometimes a new software product is unique, but only in the sense that it is a novel aggregation of features. Its functions, however, do not interact with one another so as to produce any brand new functionality or capability. In other cases, there are many small advances throughout the product, none of which is critical to the product. In still other cases, the important inventions are not fully recognized, even by the developers.

If uncertain about which aspects of a product are patentable, it is possible to file a patent application which describes the entire product in some level of detail and claim everything that looks even remotely inventive. The Patent and Trademark Office will sort through the claims and help you determine the patentable content of the product. This approach, however, is very costly. It is much more cost effective to focus on a specific invention that can be economically described and claimed.