I have found over the years that many high tech executives and managers very understandably assume that if they have a patent attorney who’s been doing a great job for them on their mechanical or electrical or chemical inventions over the years, that the same patent attorney would also do a great job handling patents for software.
I can see how this would make sense intuitively, since f you’ve had a great auto mechanic for many years and you get a new car of a different make or model, you’ll probably go back to the same auto mechanic to work on that car and they will probably do a great job on that car as well. The situation is very different, however, with patents. The first reason for this is that a patent attorney must understand the client’s invention from a technical perspective in order to craft a patent application that will both describe the invention accurately and provide legal protection for the invention that is as broad, strong, and defensible as possible. Most patent attorneys, like most scientists and engineers, are trained in a particular field of science or engineering (such as mechanical or electrical engineering). As a result, they typically can only deeply understand clients’ inventions that are within the same field as their own background and education. Although a patent attorney with a background in chemistry may be able to handle a patent application on a mousetrap very competently, that is because most people with a science or engineering background have enough understanding of basic physics and mechanics that they can handle patents for mechanical inventions easily. The same is not true for software inventions.
Typically, a patent attorney with a degree in mechanical engineering, chemistry, biology, or even electrical engineering will not have the kind of in-depth understanding of software to understand a client’s software invention with the depth that is required to craft a patent application for that invention that will serve the client’s needs. Patent attorneys who are educated and trained in these other fields may have had no education or job experience with how software works. This is just one reason why it is critical to work with a patent attorney with a technical background in software to obtain software patents. Another reason is that patent law has developed a variety of very specific rules that apply to software inventions that are different from the rules that apply to other inventions. It is almost as if there are two different sets of laws for software inventions and for other types of inventions. As a result, a patent attorney who specialises in patents on mechanical inventions will likely not be familiar with all of the latest developments in what I would call “Software Patent Law.” This aspect of patent law changes frequently. Patent attorneys who don’t regularly handle software patents will not be up to date on all of the latest developments in patent law as it applies to software.
An important example of this is the law of Alice. The landmark US Supreme Court Case form 2014, Alice Corp vs CLS Bank, usually referred to simply as “Alice,” has had historic implications for software patents and has fundamentally changed how software patent applications are examined at the US Patent Office. Furthermore, many lower court decisions have interpreted the Alice decision over the years and the US Patent Office has published many different sets of guidelines to examiners instructing them on how to apply the Alice decision to the software patent applications that they examine. Court decisions and US Patent Office policies are continuing to be updated frequently.
To obtain a software patent successfully, it is essential for a patent attorney to be well versed in all of the nuances of what I call “Alice Law,” including all of the latest updates and developments. This is something that I do at my law firm, Blueshift IP, because I specialise in software patents. A patent attorney who does not specialise in software patents simply won’t have the time or be able to make the effort to stay familiar with how patent law applies to software patents. It can be very frustrating for clients when they have invested significant time and money in a patent application only to find that the examiner agrees that their invention is new and different enough to be worthy of a patent, but the examiner refuses to grant the patent solely because it doesn’t satisfy the requirements of Alice Law.
Clients often come to me and transfer their patent applications from other law firms to me when they encounter this frustrating situation, so that I can get them over that final hurdle of Alice in order to obtain a granted patent. Furthermore, when I write patent applications for clients, I use all of my knowledge of software patent law, including Alice Law, to build in defenses against Alice rejections in order to minimize the likelihood that we will receive such rejections from examiners and in order to provide us with maximum ammunition to fight against such rejections if we receive them.
Furthermore, writing patent applications in this way builds defenses in litigation if a competitor ever attempts to invalidate the patent for failing to comply with the requirements of Alice Law.
Software patent law is almost like studying a different field of law from general patent law. That’s why I have chosen to continue to specialize in software patents for over 20 years and that’s why my clients benefit from this special expertise. It helps them with obtaining patents more quickly then they would with a generalist patent attorney and to obtain patents that are broader and stronger against being challenged later in litigation by competitors.
I hope you find this helpful for understanding the unique nature of software patents and why it’s critical for you to work with a software patent expert to obtain software patents for your company.