Dispelling Misconceptions About Software Patents
I am a patent attorney based in the U.S. who specializes in obtaining, maintaining, and enforcing patents on computer technologies—including software—for clients worldwide. I have personally written and obtained hundreds of software patents in the U.S. and many other countries over almost two decades. Yet I continue to hear sophisticated technologists, businesspeople, inventors, academics, and others express significant misconceptions about software patents. With this article I hope to clear up the most prominent of these misconceptions.[1] – Robert Plotkin
Myth: Software Is Not Patentable
Many continue to believe that software cannot be patented. This is not true. Patents on software are granted routinely every day and have been granted regularly for decades. There was an explosion in the number of software patent applications filed in the U.S. in the 1990s after a series of court decisions significantly expanded the patentability of software, and software patents have been a staple of the U.S. patent system ever since that time.
Even in Europe, where the European Patent Convention (EPC) prohibits patents on computer programs “per se,” software patents are issued regularly. To overcome the EPC’s apparent prohibition on software patents it is necessary to use expert knowledge of the EPC to draft each software patent to point out clearly the technical effect and contribution of the invention. The same is true in many other jurisdictions. Although certain particularly abstract kinds of software may not be patentable, the assumption that no software is patentable anywhere is false in nearly every jurisdiction and has been so for a long time. The key to obtaining a strong and defensible software patent in any jurisdiction is to retain the services of a patent practitioner who is well-versed in the laws of that jurisdiction as they apply to software.
Myth: Software Patents Are Not Valuable
Even those who understand that software can be patented often falsely assume that software patents are not valuable because they are too vague to enforce or for some other reason. The evidence demonstrates, however, that software patents have proven to be among the most valuable kinds of patents that can be obtained.
For example, consider the near-legendary RSA encryption patent (U.S. Pat. No. 4,405,829), which covered both hardware and software implementations of RSA’s groundbreaking encryption algorithm. This patent was licensed to countless companies for untold millions of dollars over the course of its 17-year lifespan. Several of RSA’s competitors attempted to invalidate the patent in court but none succeeded. Cryptography companies reportedly held parties when the RSA encryption patent expired in celebration of their ability to use the RSA encryption patent without needing to pay licensing fees to RSA any longer.
A well-drafted software patent can cover a wide variety of implementations of a particular invention. Furthermore, a software patent application can be filed based merely on a sufficiently detailed description of how to create a software invention, without the need to have created a working version of the software itself in most cases. As a result, careful planning can enable innovative software companies to file broad software patent applications early, thereby obtaining software patents that can later be used either offensively or defensively against a wide variety of infringing parties. These and other features of software patents can make them particularly valuable assets.
Myth: Copyright Protection is Sufficient for Software
The code of a computer program is protectable by copyright law. As a result, many falsely assume that obtaining copyright protection for a software application is sufficient to provide complete legal protection for that application. This assumption is based on a failure to understand key differences between the protections afforded by copyright and patent law. Copyright law protects only the expression of an idea. In the case of software, this means that copyright law protects the particular way in which a computer program is expressed in code. Copyright law does not, however, protect the functions performed by a computer program. For example, copyright protection for a computer program which uses an innovative algorithm to control a thermostat protects only the particular code contained with the program, leaving others free to write their own software which performs the same algorithm using different code. Furthermore, a copyright on such a program can only be used by the copyright owner to stop others who have access to the copyright owner’s program from copying that program, not to stop others from independently inventing the same program themselves.
In contrast, a patent can cover the functions performed by a computer program, regardless of the particular program code that is used to implement those functions. Furthermore, a patent can be infringed by someone even if that person had no prior knowledge of the patented invention. In the thermostat example above, assuming that the thermostat control algorithm is sufficiently novel and inventive, a patent can be used to obtain protection for the algorithm regardless of the particular code that is used to implement it, and regardless of whether the infringer copied the original inventor’s algorithm or created it independently. As a result, a patent can provide significantly stronger and broader protection for software than copyright. As a result, in many cases it is advantageous to secure both copyright and patent protection for individual computer programs.
Myth: Software Inventions Must Include New Hardware To Be Patented
Although some patents covering software also include innovative hardware, this is not always the case and need not be the case to satisfy the law in the vast majority of jurisdictions. To understand why, keep in mind that the act of programming a computer with a computer program causes the computer to be reconfigured into a new state. This resulting programmed computer contains hardware which has been configured to perform a particular function specified by the software with which it has been programmed. If the computer program is novel and inventive (“nonobvious” under U.S. patent law), then the resulting programmed computer contains inventive hardware. As a result, typically it is not necessary to invent any additional special hardware to satisfy the legal requirements for patentability.
This is not to say that every computer program—even every new computer program—can be patented. A computer program which merely plays a particular song will likely be seen as failing to satisfy the “utility” requirement under U.S. patent law, the “industrial applicability” requirement under the European Patent Convention, and similar requirements in other jurisdictions. That is why a patent firm with expertise in the law of the applicable jurisdiction must be consulted in connection with every software patent. The fact that some computer programs cannot be patented does not, however, alter the general conclusion that most software for performing patentable functions can be patented if it satisfies the applicable legal requirements and if the patent application is written by a competent patent practitioner.
Software patents have been a feature of patent systems worldwide for decades and will continue to remain prominent and valuable assets of leading technology companies. Any organization which develops innovative software must consider software patents as part of its overall intellectual property strategy. The law governing software patents is complex and requires both sophisticated knowledge of computer technology and expertise in the patent law of the relevant legal jurisdiction. Furthermore, the law governing software patents tends to change rapidly in response both to new legislation and decisions rendered by patent offices and courts. As a result, successfully implementing a software patent strategy requires close cooperation with a patent firm with deep experience in software patents to avoid the many pitfalls that can befall the unwary.
By: Robert Plotkin, Esq.
Patent Attorney
About the Author
Robert Plotkin, Esq. is a U.S. patent attorney specializing in patent protection for software and other computer technologies. He is the founder of the law firm of Robert Plotkin, P.C. (www.rplotkin.com), which represents leading technology companies worldwide. Attorney Plotkin is recognized as an expert in the subject of software patents and has written, spoken, and taught extensively on the topic internationally.
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[1] Although the statements made in this article apply primarily to U.S. patent law, they also apply to a greater or lesser degree in other countries.
