Archive for the ‘Patentability Tests’ Category

Can I patent my software?

Posted on July 16, 2011 by

CrossroadsCan I patent software and business methods? This is the first question most clients have, and one of the most common questions I get. But the real question is should you patent your software and business methods?

From a legal perspective, we need to look at two requirements in particular: novelty and obviousness. Regarding novelty, you can usually find a way to write up the invention so that it’s novel – you can add a requirement that it be coded a certain way, or that you take a particular step that is unique to you and you alone (“and then a widget powered by purple hamsters running clockwise does the inventive thing”). But then your competitors will have an easy way to avoid infringing your patent (Use blue hamsters! Or have them run counterclockwise! Or leave them out altogether!). So you and your lawyer need to be able to resolve the tension between ‘broad enough that you’ll be able to cover work-arounds’ and ‘narrow enough for the Patent Office to find the invention patentable.’

Next, you need to address obviousness, which is a big issue for software and business method applications. Why wouldn’t one of your peers be able to easily figure out how to make your invention? Why hasn’t anyone does this already? For a more detailed discussion on obviousness, see this post.
If you and your lawyer can identify solid arguments to overcome novelty and obviousness issues, then you should consider filing the application. If not, you may want to reconsider using patents to protect that feature.

Then there are a number of business questions to consider: Is it worth your time and money to go through the process? What will your business gain from developing patent properties? How will you benefit from this investment in the years before the patent application is approved and a patent issues? For a detailed discussion of some of the biggest business reasons to file a patent, see this post.

If you and your attorney have identified the aspects of your technology that satisfy the novelty and obviousness requirements and you’ve made the business decision that your company will benefit from an application, then, yes, you can file a patent application.

P.S. No hamsters, purple or otherwise, were harmed in the writing of this post!


Is Your Software Invention Obvious?

Keyboard button with the word "learn" on itThe question of whether software is patentable is a red herring. Software has been held patentable for decades and, in a June 2010 case on the issue, the Supreme Court passed on the opportunity to change that. Reasonable people can have philosophical disagreements as to whether software should be patentable but as of this writing software is in fact patentable. However, whether or not something is the kind of invention we *can* patent is just the first test. An invention also has to be useful and new and not obvious.

Obviousness is the big question for software. To evaluate obviousness, we can begin by imagining a smart college junior majoring in CS or EE, sitting in a cube one morning and looking at a giant monitor showing a bunch of windows open to every potentially relevant web site, article, everything related to your invention. If, staring at all those documents, and without too much experimentation, the college student can come up with your invention, say by lunchtime, you need to seriously examine what you are defining as “the invention” and consider whether a patent on that invention is the best way of protecting your intellectual property.

Why couldn’t a smart college student mash up all the known technologies that already exist and come up with your invention? That’s the question to ask yourself in evaluating your innovations. Sample answers include:

1. Every one doing anything relevant at the time was focused on solving problem X but the problem our invention solves, problem Y, wasn’t on anyone’s radar screen because [insert compelling reason here]. And solutions for problem X fail to address problem Y because [insert compelling reason here].
2. You wouldn’t combine any of the known technologies because half of them relied on factor X and the other half explicitly said they avoided the need for factor X (“teaching away” from X).
3. Even if you could technically mash up all of the known solutions, you’d still be missing critical component X, without which the innovative step of Y couldn’t occur.

Frequently, inventors go through this exercise and realize that they originally defined the “the invention” too broadly. Then they identify a number of specific points of novelty in their work for which they have compelling arguments against obviousness. With those specific points in mind, inventors and their attorneys can then craft a patent application with claims that can stand up to an obviousness inquiry.