How to File a Software Patent

By River Braun, J.D.

How to File a Software Patent

By River Braun, J.D.

Software patents fall into the intellectual property suite of protections that grant the owner exclusive rights to use the protected program. They are highly controversial in the U.S. and abroad for a number of reasons, including the fact that software is already automatically covered by copyright protections and additional protections impede innovation. For now though, it may be patented if it meets certain criteria.

Hand holding chalk writing software-related terminology on a chalkboard

To qualify for this protection, the technology must have an industrial or commercial use, and not be a mere business idea. Further, it must be unique and not obvious to a person in the industry of average skill. Lastly, it must be described in detail in an application that is submitted to the United States Patent and Trademark Office (USPTO).

Obtaining a Software Patent

To determine whether your software meets the criteria, consider the following questions:

  • How is it unique?
  • What is the function of it?
  • How is information handled?
  • How will an end-user interact with it?
  • What are the specific problems that it can solve?
  • What aspects of it do you want to patent?

    Once you've determined that it satisfies the basic criteria, it's time to do your research.

    1. Perform a Prior Art Search

    This is the time to look at all software that may be similar to yours, in order to prove that yours is novel. Check out Google Patents and the PatentScope database, operated by the World Intellectual Property Organization (WIPO). PatentScope provides access to abstracts of Patent Cooperation Treaty (PCT) applications throughout the world. This can be a long process, but taking your time here can save you money down the road if it turns out yours infringes on someone else's or the USPTO determines that it is not unique. Review the U.S. Copyright Office website to see if any similar programs have been registered.


    2. Create a Detailed Description

    Once you've located any programs that may be similar to yours, you can use that information to craft a detailed description of your own software to clearly articulate the ways in which your program differs from others. Keep in mind that a technician should be able to create your system based only on your description. Your description should include:

    • Text descriptions
    • Drawings
    • Diagrams

    In addition, you must explain how your program qualifies for patent protection. In other words, does it display the qualities of novelty, utility, and ingenuity? A word of warning—avoid characterizing your software as an algorithm. Instead, describe how it affects computer hardware by executing an algorithm. If the USPTO believes you simply want to protect it, it will direct you to the U.S Copyright Office and reject your patent application. From this exercise, you can now create an abstract. This one-page document must summarize why it deserves protection, including the nature and function.

    3. File Your Patent Application

    After thoroughly researching prior art and meticulously describing your program, you are now ready to file your application online using the USPTO's EFS system. The system will prompt you to enter basic information and to upload your abstract. Finally, you will be required to execute an oath, swearing that you are the inventor (or are an agent legally authorized to act on their behalf). After your application is filed, you must respond to inquiries and provide additional information they may need. For example, if they feel that the protection requested is too broad or unoriginal, they may ask that you narrow the scope of your claims. The USPTO will publish a detailed description of your software program 18 months after the filing date, however, a final decision on protection may not happen for years. Once your patent is granted, the protections last only 20 years. During that time, you can defend your invention against infringement. If you are ready to file for a software patent, follow these steps and ensure that you complete all of the requirements in order to receive full protection. For additional information on the applicable laws, you can visit the USPTO website.

    This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.