Patenting Software

Software includes computer programs, smart phone applications, and the firmware or software utilized by the microprocessor or microcontroller of an embedded system. The extent to which software can be protected by patent has been the subject of numerous court decisions over the past several years.

Current Framework for Software Patent Protection

In order to be patentable, an invention must satisfy the Alice/Mayo test set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int'l., 573 U.S. 208, 110 USPQ2d 1976 (2014). “The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). . . . If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.” Manual of Patent Examining Procedure §2106 (citing Alice, 573 U.S. at 217-218, 110 USPQ2d at 1981). Mayo refers to Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 73, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012).

The Manual of Patent Examining Procedure §2106, which is published and used by the United States Patent and Trademark Office, further explains the process for analyzing the claims as follows:

• Step 1: Is the claim to a process, machine, manufacture or composition of matter? If not, then go to Step 2A, Prong I.

• Step 2A, Prong I: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea? If yes, then go to Step 2A, Prong II.

• Step 2A, Prong II: Does the claim integrate the abstract idea into a practical application? If yes then, go to Step 2B.

• Step 2B: Does the claim recite an additional element that amounts to significantly more than the abstract idea (expressed differently, does claim recite an inventive concept)?

Step 2B of the test can be met by “[a]dding a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application”. Manual of Patent Examining Procedure §2106.05 (citing BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016)).

Applying the Software Patent Framework

Patenting software requires balancing the need for commercially meaningful patent claim scope with the need to confine the claims to a particular useful application. Claims limited to the algorithm itself will not be patentable. However, patent protection can often be obtained for claims that include other elements of the software or the device in which the software operates which are necessary to accomplish the particular purpose and to provide the particular advantages of the software. These elements may include the user interface, the manner in which software inputs are obtained, the manner in which the output is provided, the unique nature of any graphical displays and/or presentation of dynamically changing, time-sensitive information, or the specific ordered sequence of steps which accomplish the particular purpose. Specific combinations of elements may result in a patentable claim even if the individual elements are not patentable subject matter.

All details of your software should be carefully evaluated by a patent lawyer to determine whether your software is patentable subject matter. Your patent application should include very specific descriptions and drawings which show the user interfaces, process steps, and advantages of the software.  Please contact me to discuss whether your software includes patentable features, as well as how to best protect your software.

Recently Introduced Legislation May Improve Software Patent Eligibility

The Patent Eligibility Restoration Act of 2023 was recently introduced in the Senate.  If this bill becomes law, patent eligibility for software could potentially be improved.  This bill would eliminate all judicial exceptions to patent eligibility.  Any invention that can be claimed as a useful process, machine, manufacture, or composition of matter, or any improvement thereof would be eligible for patent protection, subject to specific exceptions.  These exceptions include:

  • A mathematical formula which is not part of a category described above.
  • A mental process performed solely in the mind of a human being.
  • An unmodified human gene as that gene exists in the human body.
  • An unmodified natural material as that material exists in nature.
  • A process that is substantially economic, financial, business, social, cultural, or artistic.  Processes drawn solely to the steps undertaken by human beings in methods of doing business, performing dance moves, offering marriage proposals, and the like will be ineligible for patent protection, even if non-essential references to a computer are added.  However, any process that cannot be practically performed without the use of a machine - including a computer - will be eligible for patent coverage. 

If this bill is enacted, the limits on software patent eligibility will be expanded and clarified.

When deciding whether to apply for a software patent, applicants should consider not only the present limits on software patent eligibility, but a;so the possible future limits on patent eligibility.  Although this bill is still in the early stages, intellectual property protection tends to attract bipartisan support.  Please contact me to discuss how to best protect your software.

Copyright Registration of Software

Regardless of whether a patent application is filed for software, that software can also be protected through copyright registration.

Copyright protection is more limited in scope than patent protection. Copyright protects the expression of an idea, not the idea itself. Copyright therefore protects the software code as well as the screen displays, both of which are very likely to include original creative expression. Copyright registration is easily obtained, and the term of protection is considerably longer than patent.

To the extent that the software code contains trade secrets, the application for registration can be filed in a manner which protects the secrecy of those trade secrets.

Learn more about copyright here.

Trademark Registration for Software

The name under which the software is a trademark and should be protected as a trademark. Before the name is selected, a full trademark clearance search should be performed. If the results of the search are favorable, then an application for federal trademark registration should be filed.

The icon used to identify smart phone applications also serves as a trademark, and can be registered as a trademark.

Learn more about trademarks here.