Privacy, Business and Law

Software patent filing and issuance is growing rapidly as intellectual property has widely become the core asset of many companies. Patenting software inventions has recently gained momentum as the intellectual property protection of choice.

Patentability of software and computer related inventions has been batted around in the legal system for years. What is and what is not patentable has been a source of confusion among both the courts and the U.S. Patent and Trademark Office. Multiple cases have been decided on the patentability of software processes and computer related inventions.

Within the courts the availability of patent protection for software has come a long way. For instance, it was once thought that the use of a mathematical algorithm would automatically create a non-statutory rejection under s101. Now the Freeman-Walter-Abele test is applied to determine whether an invention containing a mathematical algorithm is statutory subject matter. Cases such as In re Iwahashi, In re Alappat, and Diamond v Diehr, have helped to make the analysis of a software inventions patentability clearer.

U.S. Patent and Trademark Office released guidelines entitled “Examination Guidelines for Computer-Related Inventions” to assist patent office examiners in the examination of applications. As the guidelines point out, they do not have the force and effect of law but are to be followed when patent examiners are examining applications. These guidelines are an insightful look into patentability of computer-related inventions from the view point of the patent office. Combining cases which define what constitutes patentable subject matter with the Patent Office’s guidelines leaves practioners with a clearer understanding of software and computer-related invention’s patentability.

The United States Patent and Trademark Office organizes its patent collection into classes. Software and computer related patents are reclassified often due to the large number of software patents being issued. Rapid growth of the relatively new software patent collection is one reason there has been some discomfort with the scope of issued software patents. Hopefully as the Patent Office’s collection of patents grows and software patent issues are debated, the examination process will continue to improve.

If it seems as though a thorough search of software patents was not performed, or was not able to be performed then a validity search would be in order. Validity searching is often an overlooked tool. When faced with possible infringement, it is wise to ascertain whether or not the patent is valid. A validity search performed by technically competent counsel could possibly circumvent costly litigation. Validity searching is also useful in determining a patents scope when contemplating designing around a patent.

Inventions encompassing software have been around for years but it is only recently that software patents have gathered favor among companies and practioners. The complexity of software inventions requires legal and technical expertise. Software patent applications and validity searching also require technically as well as legally competent counsel.