Can You Patent Software?

Thomas Weifan Mon

Associate Patent Attorney

Developing computer software can be a difficult, time consuming, and lengthy process. After this long road, people often want to protect their software with a patent. But the question arises: can you patent software?

Can You Patent Software?

The answer to the question of software’s patentability is the frustrating “it depends.” Software algorithms on their own cannot be patented, but the process underlying the software often can be patented. 

Patents Rights

A U.S. patent can be highly covetable as it gives patent holders the legal intellectual property right to exclude others from making, using, selling, or importing whatever is within the scope of the patent.

Software running in the laptop

The United States Patent and Trademark Office is the government body in the United States that grants patent approval for inventions. The Patent Office and United States patent law refers to the idea, product, or technology that is being patented as an “invention.”

Patent owners can be the sole legal source of the patented invention and use or sell the invention by themselves. Patent owners can also license the rights to the applicable patent to others. Finally, a patent owner can sell or transfer the applicable patent rights as a type of intellectual property asset.

Patentable Inventions

In general terms, to be patentable, an invention must be:

  1. Novel;
  2. Non obvious; and
  3. Useful.

To be considered useful, the invention must fall into one of four categories:

  1. Machine;
  2. Process;
  3. Manufacture; and
  4. Composition of matter. 

Moreover, the invention you are looking to patent must also not be:

  1. An abstract idea;
  2. A natural phenomenon; or
  3. A law of nature. 

This is where software can run into issues. Software is often classified as an abstract idea under United States patent law. Patenting a process, on the other hand, is not an abstract idea. Therefore, if the software can be written out as a process, then the software may be a patentable process. 

Software patents can be extremely powerful economic tools for software programs. This is because they can protect features of a software program that are otherwise not protectable under other areas of the law such as copyright or trade secrets. 

As an example, patents can be obtained for ideas, systems, methods, algorithms, and functions embodied in a software product.  This would include things such as editing functions, user-interface features, compiling techniques, operating system techniques, menu arrangements, display presentations, program algorithms, and program language translation methods.

Software That Is Patentable

Computer software is a collection of data or computer instructions that tell the computer how to work. This is what forms source code or object code. Software is generally the information that is processed by computers, data, and programs. 

Software is often unable to be patented when it cannot be distilled down to a specific process. Software can be patentable, on the other hand, if:

  • It improves the functionality of computers in some way; or
  • It solves a computing challenge in a new way. 

Therefore, the software needs to be written with a very specific focus on the technical underpinnings of the software. 

Determining how to patent a business software

Many software developers actually encourage not allowing the patentability of software. Some software developers believe that awarding patents to software discourages innovation and additional discoveries in computer ideas.

Eligibility Criteria for Patenting Software 

Software is patentable if it falls into one of three categories:

  • Mathematical concepts;
  • Methods of organizing human activity; or
  • Mental processes.

This means that to have patentable software, if you can break down your algorithm into a series of steps and explain how it solves a real-world problem, then it will probably meet the eligibility criteria. 

Patentability of Software in the Law

Under United States patent law, what the patentability of software turns on is whether you can break your software down into a specific process. If you can break down your software into a series of mathematical steps and procedures that mechanize a process, then the software falls into the patentable “process” category as opposed to the “abstract idea” category. 

So, while software cannot be patented on its own, you can patent the series of steps that lead to the software that has been created. 

Specifically, under patent law, one of these two specific requirements must be met:

  1. Your software must be more than an “abstract idea”;  or
  2. If your software is an abstract idea, it must have additional elements that transform the underlying abstract idea into something that is patent-eligible. 

Most importantly, to be able to be patented software needs to offer some kind of identifiable improvement to the underlying mechanism. This means that merely doing something that is known on a computer is very unlikely to be patentable.

Abstract Idea

The question of whether something is an abstract idea is at the heart of whether software is patentable. Abstract ideas do include underlying economic practices, specific methods of organizing human activities, an idea in and of itself, and mathematical relationships and formulas. Software can go beyond an abstract idea if it improves the functionality of computers. 

Software improves the functionality of computers if:

  • It quickens the pace of existing computer processes that are currently available; 
  • It enables computations previously unable to be performed by computers or otherwise unavailable in a computer setting; or
  • It eliminates or reduces the number of computers or computing resources that are necessary to carry out a specific task.

If the software does not improve the functionality of computers, then it may still be eligible for a patent if one of the following is present:

  • It is necessarily rooted in computer technology; 
  • The software and its associated patent claims do not preempt every application of the underlying idea; or
  • It arranges the conventional components of a problem using unconventional components in an unconventional way. 

Overall, patentable software often ends up turning on the level of technical detail written out in the patent application. By drafting your software patent application in a manner that focuses on how your software overcomes specific technical challenges that are presented to your underlying invention. 

The Alice/Mayo Test

Four hands doing a fist bump

Whether you can patent software has been a hot and debated question in the court system. In Alice Corp. v. CLS Bank, the Supreme Court ruled that because abstract ideas, natural phenomena, and laws of nature “are the basic tools of scientific and technological work”, it was concerned that granting patent rights for these types of tools might impede innovation rather than promote it.  Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).

Alice, and another related legal opinion Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012), established a test referred to as the Alice/Mayo test.  This patent law test is as follows:

  1.  Is the claim at issue directed to a “judicial exception,” such as an abstract idea? If so then:
  2. Do the claims contain an element or combination of elements to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself?

This law can be summed up in the idea that you must be able to write out the steps for your software that make up your algorithm. Different countries will have different standards.

Step One of the Alice/Mayo Test

The first test of the Alice/Mayo test is as follows: 

“[f]irst, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” 

In making this determination, the Supreme Court has warned that courts “tread carefully” in its application:

At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, “all inventions… embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. “[A]pplication[s]” of such concepts “`to a new and useful end,’” we have said, remain eligible for patent protection. [citations omitted].

By treading carefully, this means that a court must look at whether patent claims are actually directed to the concept that is patent ineligible. This means that the difference between whether a patent claim uses or applies an ineligible concept or whether it is actually “directed to” that concept is at the heart of the first step of the Alice/Mayo test. 

This step of the Alice/Mayo test is a meaningful step in the process. Nevertheless, it does not necessarily create a super high bar that must be overcome. 

Step Two of the Alice/Mayo Test

It is important to note that the second step of the Alice/Mayo test can only be met if the first step is determined to be met regarding an abstract idea that is involved. This means that, if the underlying patent claim is not directed at an abstract idea, then the underlying claim is eligible for a patent and therefore there is no need to proceed to step two. 

On the other hand, if the patent claim is found to be directed to an abstract idea under step one of the Alice/Mayo test, then the underlying claim could still be eligible if there is an inventive concept contained within the invention. 

According to the Supreme Court, the second step of the Alice/Mayo test is determining whether the patent claim contains an “inventive concept” that is sufficient to transform the underlying abstract idea into an idea that is eligible for a patent.

Specifically, the Supreme Court has stated that for step two:

We must examine the elements of the claim to determine whether it contains an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent-eligible application. A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].”

United States Patent Office Guidance

The United States Patent Office has put out some useful guidance on patent subject matter eligibility which explains this test in greater detail to help understand if you can patent an algorithm. This guidance was created based on numerous comments that were submitted to the United States Patent Office by patent attorneys and others specialized in the field. 

This guidance sets out a two-step process to determine the subject matter eligibility for software:

  1. The underlying software must be directed at one of four statutory categories:
  2. The software “must not be wholly directed to subject matter encompassing a judicially recognized exception.”

Regarding step two, judicially recognized exceptions for software include:

  • An isolated DNA;
  • A correlation that is the consequence of how a certain compound is metabolized by the body (Mayo);
  • Electromagnetism to transmit signals; and
  • The chemical principle underlying the union between fatty elements and water
Person holding a stamp pad

Copyright Protection

Copyright law is another potential way to protect your computer software. Copyright protection is a type of legal protection grounded in the United States Constitution. It is granted for original works of authorship that are fixed in a tangible medium of expression. Copyright covers both published and unpublished works.

United States intellectual property law defines computer software as literary work. This means that computer software is protected under copyright law.  This is because, for example, computer software can be distilled down to instructions that are expressed in codes, word schemes, or other forms. 

Software’s code and scheme can be protected under copyright law as a creative work in the same manner that a movie, work of art, or literary book would receive copyright protection. 

Copyright protection extends to any element of expression of the creativity of its author but not to the ideas behind it, procedures, methods of operation, or mathematical concepts as such.

Copyright protection actually lasts longer than the intellectual property rights afforded by patent law.  Copyright protection is given for the underlying author’s lifetime plus 70 years. Notably, for works made for hire, a copyright’s term is for 95 years from the first publication of the idea, or for 120 years from creation, whichever one is shorter. 

Of course, it is important to remember that copyright law protects the expression of an idea rather than the underlying idea itself. This means that, for software programs, it is the software program that is protected rather than the underlying functionality of the applicable software program. 

Even though copyright protection is granted when your work is first created and given a tangible form, you should still give it the proper protection and register it. 

Copyright Protection Vs. Patent Protection

It can be a complicated decision about whether to seek copyright protection or patent protection for your software. 

Copyright law is helpful because it lasts much longer and will protect software that is not significantly different in function from competitive software. However, if you only want to protect the exact way that your software code is written, then a patent may be a good idea for you. 

Patents generally offer a much broader range of protection for your software on a higher level from an intellectual property rights perspective. By obtaining a patent for software invention, this can be used to prevent others from using your specific algorithm without permission and can stop others from creating software that performs patent-protected functions.

Copyright, on the other hand, protects a particular expression of an idea. This means that your software would be protected against others copying the underlying source code of the software or a significant portion of that source code. 

Trade Secret Protection

Trade secrets are a separate type of intellectual property that are also protectable under the law. 

Trade secret law is another potential way to protect your software using your intellectual property rights. 

As explained by the United States Patent Office, a trade secret:

  • is information that has either actual or potential independent economic value by virtue of not being generally known,
  • has value to others who cannot legitimately obtain the information, and
  • is subject to reasonable efforts to maintain its secrecy. 

Interestingly, trade secrets are not subject to being “infringed,” as with patents and copyrights, but rather they are subject to theft. The legal status of trade secrets as a protectable intellectual property right will be upheld if the trade secret owner can prove the trade secret was not generally known and reasonable steps were taken to preserve its secrecy.

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