VI. Applying for a Software Patent

Software-based inventions can be claimed in a straightforward manner using method claims, where the elements of the claims are the steps of the method performed by the new software technique. If a separate patent application is filed for each innovative technique used in a computer program, the drafting of the patent application can be quite straightforward. But while it is possible for a competent computer programmer to draft a patent application, and a programmer should definitely take an active role in the preparation of the application, often an experienced patent attorney or patent agent can draft claims that may have broader or better coverage.

Although it is not required by law, once you have identified an innovative technique you should conduct a search of the prior art. This search starts with a literature review (journal and magazine articles, books, conference proceedings, and research reports) to find the material closest to the technique. The online collection of patents and pending applications offered by the patent office should also be searched. This can be done either by looking for keywords in the text, or by the classification numbers assigned to each patent. The results of the search will let you know how broadly you can claim the invention, and give you an idea of the language used to describe similar inventions.

The first step after identifying the innovative technique and determining its potential scope is to prepare a simple diagram or flowchart showing its major steps and what causes a transition from one step to the next. Additional diagrams can be prepared to show more details for particular steps. Then write the specification describing what is done at each step and how to do it. Always describe both the best way to perform the step (the “best mode,” or “preferred embodiment,” as required by Section 112) {FN77: 35 U.S.C. §112} and all the possible alternative implementations that you can think of. Describing a variety of implementations lessens the possibility that a particular step in the claims will be read as covering only the preferred embodiment.

But it is equally important that you don’t describe something that you don’t claim. It may not be possible to assert the doctrine of equivalents to cover the disclosed but unclaimed embodiments. {FN78: Johnson & Johnston v. R.E. Service, 285 F.3d 1046, 62 USPQ2d 1225 (Fed. Cir. 2002)} In light of the Supreme Court’s decision in Festo, {FN79: Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co., __ U.S. __, 62 USPQ2d 1705 (2002)} the doctrine of equivalents likely does not capture subject matter that the patent drafter reasonably could have foreseen during the application process and included in the claims. This can be solved by having a generic claim that encompasses all of the described embodiments, as well as specific claims for important embodiments.

While treatise originally proposed using a method claim for computer software, followed by simple dependent claims to a computer system and an article of manufacture, with the Supreme Court’s recent opinions in Bilski and Alice, there may be a problem if such a method claim is considered “abstract.” Until the the courts or Congress clarify what the patentability line is, it is unclear when a software-implemented technique is patentable and when it isn't.

[On June 19, 2014, the Supreme Court decided Alice v. CLS Bank, which substantially changed, and continues to change, the discussion below.]

VI. Applying for a Software Patent

[On June 19, 2014, the Supreme Court
decided Alice v. CLS Bank,
which substantially changed, and continues to
change, the discussion below.]