Patenting Computer Software

The U.S. Patent and Trademark office doesn't issue utility patents on software itself; they issue patents on inventions that use innovative software to produce a useful, concrete, and tangible result—that is, “software-based” inventions.

A Little History

When first faced with applications for patents on software-based inventions in the 1950s, the U.S. Patent and Trademark Office (USPTO) routinely rejected the applications on the grounds that software consists of mathematical algorithms (abstract methods for solving problems not tied to a particular use or tangible structure), which were considered to be unpatentable for the same reason abstract laws of nature are unpatentable. In the late 1980s, however, the USPTO began -granting patents on inventions that rely heavily on innovative software. Now the USPTO issues patents on software if the patent application describes the software in -relation to computer hardware and related devices and limits the software to specific uses.

Software and Hardware

Softwarebased inventions that have qualified for patents often involve software that connects to and runs hardware components. For example, consider a device that monitors a patient’s heart functions, feeds the raw information into a computer where a program analyzes the information according to a set of algorithms, and causes the results of this analysis to be displayed on a monitor in a format that shows whether the person is at risk for a heart attack. While none of the components of this invention would qualify for a patent (the physical items have already been invented and the algorithm itself is unpatentable), the overall invention did qualify for a U.S. patent, even though the software was the key -aspect of the invention.

Method/Process Patents

It is also possible to obtain a patent on the process or method used by software as well as on the machine aspect of the invention—that is, the combined software and hardware. For instance, the heart monitor invention described above received a patent on a machine claim (a claim that described the structure which produced the result) as well as a method claim (a claim that described the process by which the structure worked). Other examples of software-based inventions that have received patents are a device that converts sound waves into smooth wave forms for display on an oscilloscope (a rasterizer), and software that moves the cursor on a computer screen.

In 2010, the Supreme Court kept alive software patents when it rejected the view held by the Court of Appeals for the Federal Circuit (CAFC) that the so-called “machine or transformation” test should be the sole standard for patentability. The Supreme Court preserved the status quo and kept alive the concept of software patents (as well as business method, and other process patents). Bilski v. Kappos (2010).

Software Must be Nonobvious

Despite the fact that software-based inventions may qualify for a patent, most do not because they are considered obvious over the prior art and must therefore be protected in another manner—usually under trade secret or copyright laws. Virtually all patents that have been obtained on software-based inventions are utility patents, although design patents have been issued on computer screen icons. Software code can also be protected under copyright law.

Portions of this article are derived from Patent, Copyright & Trademark: An Intellectual Property Desk Reference by Richard Stim