Podcast (video): Play in new window | Download
This is another video blog to go with our Patent Law FAQ – we hope you continue to enjoy our video blogs.
Here is a lighted-edited transcript of the blog:
Can I get a patent on my software?
I’m Anthony Verna, managing partner of Verna Law, P.C, where we focus on intellectual property and advertising law.
The short answer is “Maybe.” “It depends.” Lawyer answers, of course.
Let’s talk a little bit about what a patent for a software invention would require.
Number one: the algorithm, because that’s really what we’re patenting, has to be new. Our algorithm – or your algorithm – has to be novel. Your algorithm also has to be non-obvious.
This is the typical standard for any utility patent.
However, we had a case about, let’s call it six years ago, in which the Supreme Court said that an algorithmic patent must include an inventive step. What does that mean, six years later? We’re all still a little confused about that, but what I would say is: What does your software, what does your algorithm do that is truly different from an algorithmic standpoint?
Is it more efficient? And how is that efficiency defined? Some algorithms are defined by processing time, especially with software. Some algorithms are defined by user interface and how the user changes the interface. That’s going to be considered an inventive step.
All of that is something to consider while we ask the question, “Can I get a patent on my software invention?”
Just remember, it’s a very high bar. And as a matter of fact, the, Patent and Trademark Office, after the Supreme Court’s decision a few years ago, took all software and algorithmic patent applications and put them to the side before they were considered, before an inventive step could truly be defined.
The USPTO has their definition. We don’t really know what that particular definition is, but we really see that those software patents that do something truly different from an efficiency standpoint are the ones that are granted. That’s what’s really hitting that bar.
Again, I’m Anthony Verna, managing partner Verna Law. See us at vernalaw.com for all IP questions. Thank you.
Video Blog 31: Patent FAQ: Can I get a Patent on my Software Invention?
You are right it depends, maybe is a good answer to this question.
Here is a patent that I participated in the prosecution and drafting. We were concerned that it might fall into the ‘software’ arena, but we felt it clearly had an inventive step. I left DuPont in 2012 and they are still paying maintenance fees on this patent.
US8287066B2 Ink jet printing method
By Stephen J. Pond and Christian Jackson {I had Chris look at one of the equations and he corrected it for me.)
patent purpose to keep infrequently fired inkjets free of clogs by firing them in a manner that the specific firing was below a visually detectable limit.