The 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.