Getting a utility patent on your software can be very valuable because it provides a competitive advantage for a relatively long duration, given the speed at which technology develops and the industry evolves. But software is not always eligible for patent protection. And by its nature, the software is typically developed and made available across geopolitical borders, where in many cases, it is outright excluded from the patent laws. Where it is possible to obtain a utility patent for your software, such as in the United States, that eligibility can vary greatly, with some software products being too simple or abstract to warrant exclusive ownership and others being so specific in their functionality that the resulting rights may be narrower in scope than desired and possibly less valuable than other patents typically are. Also, the speed at which technology develops may render some patents on software obsolete well before they reach the end of the limited period of exclusivity granted under them. And if the creator of the software is unfamiliar with the basics tenets of patent law or postpones consideration for budgetary or other reasons and, in the interim, shares information or outright releases the software before seeking patent rights, she could likely find herself in a position where patenting is no longer an option. Of course, where it is possible to obtain a utility patent on software, it is usually worthy of serious consideration.

In the United States, software that is considered to perform purely mathematical computations, standard business activities, or mental processes will often be ineligible for utility patent protection as it is regarded as an “abstract idea.” That said, when the software does significantly more than that, by integrating those aspects into a practical application such as improving the function of a computer, or by implementing them into a machine, transforming an article to a different state or thing, or applying them in a meaningful way beyond just general use, then it is more likely to be patent eligible. What is considered significantly more will vary depending on the industry, function, and/or improvement provided relative to what has existed before (the so-called “prior art”). Practically speaking, if the software improves computer functionality or performs computing tasks in an unconventional way, the software is more likely to be patent eligible. It is usually advisable to ensure that a utility patent application for software demonstrates that the concept is not well-understood, routine, or conventional.

The U.S. Senate Committee on the Judiciary is considering a bill called the Patent Eligibility Restoration Act of 2022, which is intended to help clarify patent eligibility. This bill may help provide additional guidance and expand and clarify what is patent eligible.  It remains to be seen whether the bill will ultimately become the law (or what version will pass) and what impact it will have on software patent eligibility.

Meanwhile, whether or not your software qualifies for a utility patent, aspects of it may be protectable in the United States and abroad through other forms of intellectual property, whether as trade secrets, design patents, utility models (in other countries), trademarks, trade dress, or copyrights. We are happy to consider with you your software and how you may obtain or maintain competitive advantages through intellectual property protections.