How to determine whether software is patentable – Part 2

This is part 2 in a series of articles on how to determine whether your software is patentable. If you are an inventor, an executive at a tech company, or a patent lawyer outside the U.S., this will help you to at least make a first pass determination of whether your software is worth considering for patent protection. 

In each article in this series, we cover one criterion that you can use to evaluable whether your software is likely to be patentable.

The first point I want to make is that the U.S. Patent Office is very strict about rejecting patent applications that could, even in theory, be performed by a human instead of a computer. For example, if your software matches employers with people looking for jobs and it does that by comparing criteria of the employers again criteria of the job seekers and finding people who are looking for jobs who have skills that employers want. Now you may know that the particular way that your software works cannot be mimicked by a human. For example, no human could review the huge amount of data that your software sorts through or evaluate that amount of data as quickly as your software does. What your software does in a second might take a human being a year. The Patent Office, however, typically doesn’t care about this distinction (with one significant exception, which I will discuss later).  If you submit a patent application that says your software matches employees with potential employers by comparing employer criteria with job applicant skills, the Patent Office may reject your patent application by arguing that humans could perform this kind of matchmaking, in spite of the amount of time required to complete the task.

This doesn’t mean that you cannot patent this type of software. It just means that you must think carefully in advance about exactly what it is about your software that makes it capable of doing something that a human cannot do, or capable of doing something in a way that a human could not do it. If what makes your software different is that it is faster than a human, then you must describe how the software achieves this speed in detail in the patent application that you submit to the Patent Office. In addition to that, it can be very helpful to provide specific quantitative data or a quantitative explanation of exactly how much faster the software is than a human. It is useful to be extremely specific in the description that you provide in the patent application in order to make clear that your software does something that a human cannot do, but also to explain how your software does something that a human cannot do.

This may all sound strange and surprising to you, but that is why it is really critical for you to work with a patent attorney who specializes in software patents and who knows these and other techniques for writing a software patent application in a way that maximizes its likelihood of being allowed by the Patent Office.  As software patent attorneys, when we write software patent applications, we explain how the code is written in fair amounts of detail so that we can support the conclusion that even if a human were to perform the same task, he or she would not perform it in the same way that software does.

In my experience, inventors, companies, and even patent attorneys who do not specialize in software can trip up on this when they try to write patent applications for software. I will often find this when I see such patent applications after they have been submitted to the Patent Office. For example, I will see that those patent applications do not include enough detail about how the software works, in which case it is very predictable that those patent applications will get rejected by the patent examiner. The Patent Office also does not allow you to submit new information about how the invention works after you have submitted the original patent application. As a result, it can be very difficult to obtain a patent based on a patent application that did not contain sufficient detail about the invention from the beginning.

Another reason why it is critically important to work with a patent attorney who specializes in software is that the rules about how much detail you need to provide change frequently. In general, those rules have become more strict in recent years than they were in the past, but they change constantly, and the Patent Office regularly issues new guidelines that change the rules that govern software patent applications. As a result, a generalist patent attorney who spends most of his or her time working on mechanical, chemical or pharmaceutical inventions may not be familiar enough with the latest rules that apply specifically to software inventions.

In summary, in this article I focused on the need to explain, in detail in your patent application for a new kind of software, as much detail as possible about how the software operates in a way that could not be replicated by a human trying to perform the same process manually.  If you can do this, your patent application is more likely to be granted. When I speak to clients about their software inventions, by interviewing them in detail I am often able to uncover further details about how their software works so that I can describe these details in their patent application.  Often these are details that the inventors did not think were relevant, because they are attuned to the technical aspects of their invention and not to the legal requirements.

If you are a patent attorney outside the U.S. with a client who has developed new software, then this is a good time to consult with a U.S. patent attorney to further evaluate the software for patenting.  If you find that your client’s software doesn’t satisfy any of the criteria on the checklist described in this series of articles, then it means that your software is probably not patentable in the U.S. There may, however, be features of the software that you have overlooked, in which case you may need to dig further or even further develop the software and then reevaluate it for patenting.

Stay tuned for our next article about how to determine whether software is patentable, in which we’ll describe another factor to consider when evaluating your software for patenting.

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