Almost all of our custom software clients are curious about protecting their intellectual property, and with good reason – the decision whether or not to patent or copyright your software is an impactful one. The process can be long and fairly expensive, and since most entrepreneurs need to be strategic about the way they spend their cash, a rejected application can be devastating. On the other hand, protecting your intellectual property can be incredibly beneficial. Not only can it give you a leg up on competition, but in applying for the patent, your attorney can also help you avoid infringing against existing patents. So, how do you determine if pursuing a software patent or software copyright is worth it? Gathering information from others who’ve been through it is a good first step; therefore, we are including some of the important things we’ve learned through working with entrepreneurs and established businesses in their quests to patent software. Please keep in mind that our blog in no way constitutes legal advice, and that a consultation with a patent lawyer should always be a part of your plan.
Let’s start by clarifying the difference between a software patent and a software copyright. Both are important when it comes to protecting the intellectual property of software, but each serves a different purpose.
A copyright refers to the expression of an idea, not the idea itself. In other words, copyrights are applied to artistic work in order to establish authorship. To be clear, copyrights are inherent and become legitimate as soon as you finish your work. You immediately own the right to control who is allowed to copy your work, but that does not mean someone else can’t recreate your work on their own. Copyrights protect the “original works of authorship,” which in software means the code itself. This means that if another developer had access to your work, then engineered the exact same code later, it would be copyright infringement. On the flip side, if the developer did not have access to your work at the time he/she engineered the same code, this would be completely legal. In order to have the best chance of enforcing copyright infringement, it is best to register a copyright with the U.S. Copyright Office or to publish your work online. Doing this gives the entire world access to your work and makes it easier to argue that another developer had access to your code when/if they recreated your work on their own. In the end, it comes down to determining if there are multiple ways to code a solution or if yours is the only one. If there are several methods, then a registered copyright may not prevent your competitors from leveraging a solution similar to your own.
A patent, on the other hand, is a limited-time protection related to an invention or idea. Unlike copyrights, these are not inherent and must be applied for and granted by the U.S. Patent Office in order to be enforced. Patents last anywhere from 15-20 years, depending on the classification as either a design or utility patent. In the United States, an invention must meet the following criteria in order to be eligible for a patent:
In the United States, patentable subject matter includes processes, chemical compositions, machines and articles of manufacture; however, as our society has evolved, so have our definitions of patentable criteria. Intellectual property is no longer limited to physical inventions, and now includes new types of plants, DNA, computer software and other complex categories. When it comes to software and computer programs, patents apply to the operations of the app, not to the code itself. This means you must establish that the techniques it incorporates are innately linked to the computer technology. In order to do that you must identify the real-world value of the process, identify the computer’s role in accomplishing the process, describe the relationship between the computer and controller, disclose how the software functions (typically through a flowchart) and, if required, provide actual lines of code. The reason for this is to help the Patent Office determine whether or not the software-related innovation is tied to a machine and accomplishes an identifiable improvement. Both of these hurdles are in place to make sure that you are not patenting a process you can do in your head, or replacing existing manual tasks with automated solutions using software.
Most commonly, entrepreneurs or small business owners that we work with are looking to combine pre-existing components and technologies in order to solve a new task. While that type of solution may not exist, the innovation is not patentable. Simply put, you can’t patent a shovel just because you’re using it to shovel grain instead of dirt.
This is easily the hardest question we are asked by our clients, because the answer is very situationally dependent. Most pursue a patent to protect themselves from competitors, but acquiring a patent requires you to disclose unique information about your innovation, even in the application process. Because there may be multiple ways to replicate your solution using software, disclosing your idea may actually erase or decrease the competitive advantage you’re trying to protect.
Plus, there is a significant backlog within the USPTO at the moment, making the process quite time-consuming. Patents are reviewed on a first come, first served basis, so if you’re going to apply for one, get in line. Patent Examiners are specialists in specific fields/domains and can take years to master their trade. This means there is a limited number of Examiners working on software patent applications, and with the USPTO inundated with applications as is, it could take years before your application is reviewed. For software in particular, this is a major drawback. Software is constantly evolving and the shelf life of new technology may only be a couple years. By the time your application is reviewed, your innovation may no longer be relevant, and the money and effort spent on your patent application wasted.
That said, the market for software patents is continually improving. Over 100,000 software patents have been approved each year since 2010 and that number continues to rise. During the same time period, over half of the utility patents approved in the United States were related to software; so, it would be unfair to say the odds of approval are not in your favor. Do your research – if you really are the first one in your space to have your idea and it meets the criteria, a patent could be worth looking into.
If you decide that pursuing a patent is not the right choice for you, there are other options you can consider to protect your work. We always recommend getting to market with the best product possible, as quickly as possible. Beyond that, you might publish your work in some other medium so that no one else can patent it. It is sometimes recommended that you write it up in layman’s terms and publish it somewhere reasonably accessible and in the public domain, like your own website. There is a competitive advantage in being the first to market, so your efforts may be better spent focusing on getting your product out there, making it the best it can be, and publishing your successes.
If you determine that applying for a patent does make sense, find a great patent lawyer who is familiar with software applications. Most patent application rejections occur because of an inability to clearly define an innovation’s uniqueness and/or the value it provides. This can burn you in two ways: 1) your application will be rejected or 2) your patent is approved but you struggle to enforce it because of ambiguous claims. Find an attorney and agent that can help you author the application with the ultimate protection in mind. In the case of software, uncertainty is usually an indication that investigating a patent is worth your time. Your custom software development team may be able to provide preliminary guidance, but given the potentially overwhelming benefits of a patent, do not hesitate to consult with a patent lawyer.