The Complications of Patenting Software

Tori Lutz

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Published: July 5th, 2019

Hi everyone! My name is Tori Lutz and I’m a copywriter and editor at Bold Patents, a patent attorney firm with over 40 offices across the United States. I am aspiring to go into Intellectual Property (IP) law myself someday and help bright entrepreneurs bring their innovative ideas to market.

Since gaining experience with the team at Bold Patents, I’ve learned a great deal about a range of different elements in IP law. Intellectual property can pertain to anything from branding elements like logos to the actual unique inventions your business produces or even how your business produces them.

All of these things can be separated into four main categories: trademarks, copyrights, patents and trade secrets. From there, you can get different types of protection such as utility patents vs. design patents. Ultimately, it can get a little complicated, so it’s best to make sure you do your research and consider consulting a patent attorney before jumping into things.

All that said, something that many people are interested in with the modern market is how IP law works with digital inventions like apps or other software. Though it may seem vastly different from other invention types (and it does have its own unique elements), it still is a unique invention that can go through a patenting process to protect.

To understand the more complicated side of it, it’s best to first know what exactly we are working with when it comes to software patents!

What is a Software Patent?

Software patents are a type of utility patent since they surround the use and function of the invention rather than other elements like design or appearance.

Much like any other patent, a software patent is a form of protection that prevents others from using your idea in an inappropriate or wrongful manner. In other words, your competition cannot use your patented idea without your explicit permission (or they will face consequences).

It is important to note that since the software patent is a type of utility patent, it is protecting the function of your app or software, not the coding that created it. Protecting that would fall more under the category of a trade secret since it is the way in which your business accomplished the idea and brought it to market.

Lastly, software patents can be used in both defensive and offensive manners since the patent owner must also act as the enforcer. It will be your responsibility to make sure other respect your patent and to take them to court if they don’t, so your responsibilities won’t end when the patent is granted (though this is a huge milestone for you and your business).

What is the Application Process?

Now, you’ve probably noticed that there are seemingly infinite apps and other instances of software products already in existence, so it’s important to first make sure you do your research to ensure and prove that your idea is unique.

The three things that you should look for are:

Is it novel?
Is it non-obvious?
Does it have utility?

Once you are sure that your idea is unique and eligible for patenting, it is important to fully disclose and document your invention.

This goes beyond simply having a prototype ready to go and defending the actual coding of the application and why that makes it unique. As mentioned, you are protecting the function of the software, not the code that made it possible.

Once you’ve disclosed your invention and documented how it works and can be used, you can move on to a professional software search. This will often be done with the help of a seasoned patent attorney (which I will touch upon further later) to make sure you get a solid legal opinion.

In addition to being unique and hitting the three main requirements listed above, a patent must also be eligible which will be determined through the search.

To be eligible, your software must provide a unique use and function that goes beyond simple human action. An example of an app that was deemed ineligible by the supreme court was one that surrounded bank transactions, converting currency and ultimately providing a service that was already being done. By making sure you do a professional search, you can better avoid that kind of let down.

That said, even if your invention is deemed ineligible for a patent on the first go, you can still look to design other elements of it through things like design patents that could protect the look and appeal of your invention. Plus, since you did the search, you can rest easy knowing that you didn’t waste thousands on an idea that would be rejected!

Once you are sure that you are ready to file your patent, you will need to gather the following:

Declaration
Information Disclosure Statement
Cover sheet
Specification
Claims
Drawings
Fee sheet
Entity Status Form
Application Data Sheet

Then you will be ready to go!

What does it Cost?

This is an area that can complicate things for many inventors and startups, especially since finances can be especially tight at the beginning.

Patenting is far from a cheap endeavor, so it should definitely only be started once you have everything in order and are ready to do it right. There are a lot of different things that go into the total cost of a patent, so breaking it up is the easiest way to clear it up.

Application Filing Fees

These are nonrefundable, so expect to take this hit no matter how far along in the process you get. A provisional patent application will cost you $65 while a non-provisional patent application will cost $400.

Patent Lawyer Fees

This can range depending on a number of factors, but most quality patent attorneys will cost $200-$400 per hour. There are, of course, lawyers who will work with your budget or will charge less, but don’t let the prices scare you away from the best choice for you and your invention.

Maintenance Fees

Once you have already been granted your patent, you will still have maintenance fees to keep it valid. The fee after the first 5 years is $400, after another 5 years is $900 and after the final 5 years is $1,850.

Overall Cost (Average)

Software patents tend to cost around $10,000 at the end of the day. The cost definitely ranges since fees can be different for everyone, but be sure to have this much budgeted when starting on this to make sure you are ready for the financial stress (which will definitely be worth it if you’ve done your due diligence and are ready to go).

Common Mistakes and Complications

Since less physical and tangible ideas like software concepts won’t have the same elements and variables as other inventions, they tend to come with their own unique mistakes and complications as well.

Don’t let this scare you off! Knowing what to expect will help you prepare yourself to better tackle the endeavor and make sure you don’t leave any loose threads or make easily avoidable errors.

One of the most common mistakes that people make in any industry or area is releasing their invention to market and waiting too long before filing for a patent. Waiting longer than a year will cause the invention to be considered “public knowledge” and no longer eligible for patenting. Plus, it gives your competition a chance to jump on your idea before it’s protected.

This can get especially complicated with software inventions since they aren’t tangible items that take a fair amount of time to reverse-engineer, produce and bring to market. Even if someone comes to the same utility through different means and code, it is still fairly easy to jump on if it’s made available too soon.

Another complication is that software ideas are often fairly abstract which can be hard to legally define when trying to take someone to court for infringement. This definition could also vary in different geographical locations, so it can get a little murky.

Lastly, patenting software can get a little complex in terms of stifling innovation. The tech industry is made up of ideas that build off each other more so than most other industries, so this can complicate things both for you and your competitors.

Importance of a Patent Attorney

Even with the research you are doing, it is going to be necessary to search for a reliable and seasoned patent attorney when you undertake this journey.

As mentioned, the patent process will take a lot of time and money, so it’s important that you do it right to make sure you avoid frustrations and get the best, most desirable results at the end of the day.

Make sure you find someone who is a great, well-rounded patent attorney. A specific software patent attorneywill only be able to help you with one precise process whereas a well-rounded one will be able to think of other ideas if things don’t go perfectly to plan from start to finish.

Plus, you will likely need help with the legal process in addition to the filing process since this will be a considerable journey beyond the patent award.

Ultimately, it’s just important that you put a great deal of research into who will represent you and help you with this process. This will likely take some time and conversations with various candidates, but you will be grateful for putting in the work when you have great representation on your side who will know all of the answers that you didn’t already uncover through your own research.

In Summary

Software is a great area of invention in our modern day market, and it deserves just as much attention and protection as any other type of invention!

Doing your homework will make this process much easier, and it will make it a lot less daunting as well. Just remember to find a reliable patent attorney to walk you through the process and you will be good to go with your invention!

Get excited! You’re one step closer to protecting your original idea and having all of your hard work pay off. Happy patenting!