Why It’s Important Not To Write Your Own Software Patent

I encounter many potential clients who assume that the work of a patent attorney is primarily to put the client’s description of their invention into “legal language,” to fill out the appropriate forms, and then to submit the results to the Patent Office. Nothing could be further from the truth, although this is a reasonable assumption if you’ve never interacted with the patent system before. For example, many people have applied for their own copyright registrations by filling out a simple form. Writing a patent application that has any value, however, requires significantly more than writing a technically accurate description of the invention and filling out the required forms.  Anyone who attempts to obtain a patent this way is likely to be sorely disappointed.

You could write and submit your own patent application to the Patent Office, and the Patent Office will accept such a patent application and examine it.  You may even obtain a patent based on such a patent application. Two problems with such a patent, in my experience, are that: (1) it is likely to be so narrow in its scope that it will be nearly impossible to enforce against anyone who makes, uses, or sells the patented invention; and (2) it is likely to be vulnerable to being invalidated (nullified) for a wide variety of reasons. These problems are particularly likely to exist if the patent is a software patent.

These facts often come as a surprise to many inventors and high tech companies because they think that because they have invented a new type of software and because they are the technical experts on that software that they must be in the best position to write a patent application covering the software that they’ve invented. Their logic is that if they can write a document that describes their own software with perfect technical accuracy that a patent based on that description must provide them with all the legal protection that they need. The flaw in this logic is that a patent application that only contains this kind of accurate but narrow technical description will result in a patent that provides only the relatively narrow scope of protection that is provided by copyright protection on the same software. What I mean by this is that the patent will very likely only prevent competitors from selling products that are nearly exact copies of the software described by the patent. Software that is even slightly different than the patented software will likely not infringe the patent.  This makes it easy for competitors to copy the key inventive features of the patented invention without infringing the patent. As a result, the patent is nearly worthless.

The basic reason that patents written directly by their inventors tend to have these problems is that patents only have the kind of broad scope that makes a patent strong if the claims of the patent are written broadly.  It is the claims of the patent that define the legal protection provided by the patent.  In my experience, only experienced patent attorneys know how to write claims that are broad enough to be valuable and that will stand up to challenges in court.  Patent claims are governed by a wide variety of rules that differ quite significantly from the rules of standard English. Few people who are not patent attorneys even understand how to read patent claims, much less write them.  A patent claim written by an inventor may be completely accurate from a technical perspective and yet be completely worthless because it is so closely tied to specific technical details that no competitor’s product will infringe the claim.

Learning how to write patent claims that satisfy the wide variety of arcane legal rules that govern patent claims and that cover the invention both accurately and broadly typically takes at least several years of full-time experience writing patent claims.  I have been practicing patent law for over 20 years and continue to improve at writing patent claims. I have yet to meet an inventor, no matter how brilliant, who is untrained in patent law who can write a patent claim that has any value. This is not an insult to inventors.  It is a statement of fact that results from the unusual requirements that apply to patent claims and the particular way in which patent claims are interpreted, which differs quite significantly from how normal English text is interpreted.

For these and other reasons I strongly advise inventors and high-tech companies to pursuit patent protection for their inventions in cooperation with a patent attorney who is skilled and experienced.  In particular, if the invention involves software, I recommend retaining a patent attorney who has particular expertise in software. Otherwise, you could invest significant time and money in a patent application that, even if it is granted as a patent, will have virtually no value because you won’t be able to use it for its primary purpose, which is to block competitors from copying your invention and selling it to generate revenue from it without your permission.

This is what we do at Blueshift IP for our clients every day.  Contact us if you develop innovative software and wish to protect it with strong, broad, and defensible patents.

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