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Legal Protection for the Software Arts — Part 8

Patent protection is perhaps the most contentious form of IP protection for software.  There is no surer way to start a fight amongst the various interest groups interested in patents than to discuss software patents — both because the issue is so contentious and because the law is, to say the least, confusing (or was that confused?).

A utility patent gives its owner the right to exclude others from making, using, offering to sell, selling, or importing the owner’s patented invention. Unlike copyrights, patents protect (at least in theory, and if one can actually get a course to enforce it) the functional application of a software-implemented invention’s underlying inventive idea rather than merely the software’s coded expression.

Patent requirements are considerably more stringent than those governing copyrights, and have become even more so as a result of the federal courts’ increasing wariness of the patent subject matter eligibility of business methods and other software-implemented inventions. Applicants for patents on these inventions typically claim them as novel methods, systems, machines (for example, as pre-programmed, special purpose computers), machine-readable physical media, or a combination of these technologies.  The courts closely scrutinize the patent eligibility of these inventions because patent claims directed to them are often drawn so broadly as to cover abstract ideas (for example, mathematical formulas and algorithms) without limitations sufficient to confine the claims to specific applications.

Following the Alice and Bilski Supreme Court cases, courts scrutinize patent claims drawn to software-implemented inventions as follows: (1) software is not patent eligible if an analysis of the claims discloses that they are drawn merely to the abstract idea — though many would argue that the way courts determine what counts as an abstract idea makes no sense.

But without getting too deep into the controversy, at a high level, software may be patent eligible if the claim’s elements, considered individually or as an ordered combination, describe an inventive concept sufficient to ensure that the claims are drawn to significantly more than the abstract idea (or other ineligible subject matter).  The inventive concept requirement is not satisfied by patent claims that direct: 

(1) the broad application of a natural law, phenomenon, or idea to achieve a specified result without stating limitations sufficient to avoid preempting the use of the concept for all purposes; 

(2) the use of a staple technology such as the internet or a generic or general-purpose computer to implement an abstract idea; or 

(3) field of use limitations.

One major concern about software patents is the disclosure requirement. The patent must include a clear and definite description of the claimed invention and includes information: stating the manner and process of making and using the invention (enablement) and specifying the best mode the inventor contemplates for carrying out the invention (the best mode).  The fact that these disclosures become public upon publication — which is often well before a patent is allowed, can make many software owners leery of disclosing their “secret sauce” before even knowing whether they will receive an enforceable patent in return.

Accordingly, if a software program owner or developer is seeking to protect their assets through patents, it is highly advised to engage knowledgeable counsel.

David L. Cohen

David L. Cohen, P.C. – Kidon IP
123 West 93rd Street
New York, NY 10025
[email protected]
(914) 357-5196