According to the Software Patent Institute, thousands of software patents are issued every year. However, the ongoing debate over whether and under what circumstances software should be patented often presents a dilemma for individuals and companies engaged in software development. In particular, it can be difficult to determine how best to protect computer software in ways that will prevent competitors from making, using, or selling similar programs that perform the same functions.
The United States Patent and Trademark Office (USPTO) has issued guidelines for the examination of computer related inventions. These guidelines apply a series of tests to determine whether an invention qualifies for the strong protection of a patent. While these guidelines do not carry the weight of law, they do show that some software is patentable.
Under the Berne Convention, copyrights are automatically provided under U.S. law to the authors of “original works,” including literary, dramatic, musical, artistic, architectural and other intellectual works. Copyright protection applies automatically when a work is created and “fixed in tangible form,” such as on a computer disk or hard drive. Moreover, this protection applies whether or not the work is formally registered with the USPTO. Copyright laws provide original authors or artists the right to exclude others from copying their work or claiming it as their own. It grants them exclusive rights over the reproduction and preparation of derivative works as well as the distribution, publication or public display of their work. While formally registering a copyright is not required to claim these protections, it is required to obtain damages in litigation pertaining to infringement. Also, it is critical to note that copyright does not protect facts, ideas, systems, or methods of operation; it only protects the way these things are expressed. In other words, it will not prevent a competitor from creating a program that uses the same ideas presented in another way.
In comparison to a copyright, a patent entails the grant of a property right by the USPTO to the inventor. Thus, it gives the owner of the patent the right to prevent all others from making, using, or selling the patented invention without permission. Generally, a patent is valid for 20 years from the date on which the application was filed with the USPTO. While U.S. patents are effective only within the United States, U.S. territories and U.S. possessions, they do give the owner the right to prevent the importation of the same invention by foreign competitors.
There are three types of patents: utility, design, and plant. Utility patents may be granted to individuals or corporations that invent or discover a new and useful process, machine, article of manufacture, composition of matter, or any new useful improvement thereof. Design patents may be granted to individuals or corporations that invent a new, original, and ornamental design for an article of manufacture. Plant patents may be granted to individuals or entities that invent, discover or asexually reproduce any distinct and new variety of plants.
Most software inventions are candidates for utility patents. However, to obtain the broad protection of patent law, several requirements must be met. For example, the invention must be truly new and not obvious. This requirement creates a significant obstacle for many software patent applications. Usually, successful patent applications are limited to works that truly represent significant advances in software engineering.
While patents clearly provide legal protections that are not available merely through copyright, there are many factors to consider in deciding whether to seek copyright or patent protection for software. Many software developers tend to make this choice based on the amount of time, effort and money that will likely be involved in obtaining a patent compared with the need to protect the potential profitability of the invention. Of course, copyright protection exists automatically when the software is created and fixed in tangible form, and the additional step of registering with the USPTO generally costs less than $500 and can be completed within about three months. Patent protection does not exist until a patent is formally issued by the USPTO. The application process can be time-consuming, tedious and expensive. Generally, it takes about two years from the date of filing to secure a patent, and the cost can range from $6,000 to $15,000.
If you want to file for a software patent, it is highly advised that you speak to a technology lawyer near you to discuss the process.