Software is a huge and expanding market characterized by rapid product innovation. In addition, software is also increasingly key to distinguishing and adding value to other products ranging from automobiles to video books. As a result, software patents are important to prevent competitors from taking advantage of one's software inventions. However, many software inventors are unclear about the process of patenting software.
The software patent process typically begins with a patent search. A search helps determine if the subject matter of the invention is patentable, and the likely scope of a patent. The search finds similar inventions, referred to as art, that may limit the breadth of the patent or preclude allowance of the patent altogether. The information is invaluable in deciding whether to file a patent application, and how to structure it. However, much of the art for cutting edge software technology is still not public at the time of the search, so the decision must include estimates of the current state of the technology.
If you decide to proceed with a patent application, the inventors disclose the details of the invention to a patent attorney. From that disclosure, I prefer to prepare an initial set of claims and drawings that I then review with the inventors. The second (and third) discussion of the invention usually brings out additional aspects of the invention that can be protected. After the inventors are satisfied that the claims and drawings accurate capture the invention, I draft the application. The application must be prepared to anticipate and provide alternatives for multiple technical obstacles to allowance of the patent. After an inventor review, we file the application and drawings with inventor declarations, assignments, and information disclosure statements.
And then we wait. Examination usually begins 1-3 years later, although there are ways to accelerate this. Occasionally examination begins with a restriction requirement, where the examiner asserts that the application includes more than one invention. This may be because we intentionally included multiple inventions to differ costs, and sometimes because the examiner things the invention is too broad. There are a number of effective ways to deal with restriction requirements.
Usually there is no restriction requirement, and the examiner rejects all or most of the claims because of prior art that is found in the examiner's own search. The examiner will assert that this art shows that your invention is not novel or was obvious. We analyze these rejections, and determine which arguments are valid and which don't hold water. We then create a strategy combining persuading the examiner and modifying the patent claims to overcome the rejections. We discuss this strategy with the examiner to get feedback and to persuade. To help get broad claims allowed, I take time to determine the best persuasive strategy for each examiner.
We then file a formal response based on the strategy, which the examiner considers. The examiner usually conducts another search, and may find a new reason to reject your application. Sometimes a number of iterations are required before finding the right combination of language and scope to both protect your invention and have the claims of the application allowed by the examiner. The number of iterations is highly dependent on the breadth of the claims that you want. Broader, more valuable claims take more work, and sometimes even an appeal to be allowed. After the application is allowed, there are issue fees and then maintenance fees after 3.5, 7.5, and 11.5 years.
Protecting a software patent is a long and expensive process. However, when compared with the economic costs of allowing a competitor to copy your innovation and take advantage of your development work, a software patent is bargain.
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