Software is the backbone of the modern economy. From mobile applications to enterprise platforms, software powers much of today’s cutting edge technology. It weaves its way through every aspect of the economy and powers our lives for work and play.
Software presents a unique set of challenges for IP protection. The industry is fast moving, with rapidly evolving products and constantly changing technology platforms (mobile devices, wearable devices, etc.).
In many industries, a business will only be willing to invest the time and resources into product development if the business is confident it will be able to acquire patent protection. In these instances, the business will do a lot of the IP diligence (e.g., patent searching, patentability opinion, freedom to operate opinion) on the front end before committing to product development. Medical devices are a good example, as these products have a long path to market, specifically when FDA approval is required.
Software tends to be on the other end of the spectrum. In the software field, clients often develop the product first and then reach out to their IP attorney to see what can be done to protect it. And even when patent protection is available, the time and expense required to secure patent protection may not be a priority as the software may evolve beyond the scope of the patent protection before the patent even issues. Of course this is not true of all software invention and software patents have been at the heart of many of RPL’s clients’ biggest commercial successes. For this reason, and others, it is important to evaluate all areas of IP protection for your software invention.
Patent protection in the software space can be tricky. In 2014, the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International changed the patent landscape for software patents. By increasing the rigor with which the courts and the patent office analyze whether software patents are patent eligible subject matter (increasing the number of patent applications rejected for being directed to “abstract ideas”), the Court has made it more difficult for inventors to protect the software innovations through the patent system. More difficult doesn’t mean impossible. In fact, more difficult can be an opportunity to focus your efforts on the most patentable innovations, rather than diluting your effort across a wider range of features. It is important to work with a patent attorney experienced in this area to help determine whether patent protection may be available for your software.
The first key in assessing the patentability of software is to determine whether the subject matter you want to protect is patent eligible or is merely an abstract idea — abstract ideas are not patentable. As the law around abstract ideas continues to develop in the wake of the Alice decision, the USPTO has been publishing guidelines and examples related to the patent eligibility standard on their website. For readers that want quick guidance on whether their software is patent eligible, please contact us to set up a time to speak with one of the RPL attorneys about your invention. For those that prefer to first dive into the details themselves, some of the most valuable content in the link above are the Examples listed on the linked page. The Abstract Idea and Business Method examples are the one that are most applicable to software inventions.
If your software appears to be patent eligible, it may be useful to perform a patent search to determine whether it makes sense to proceed with a patent application. Although patent searching can be a valuable tool to assess the strength of your patent position before filing a patent application, it is important to recognize that patent applications are confidential for 18 months after filing. Thus, a patent search today wouldn’t uncover any patents filed within the last year and a half. In a field that moves as quickly as software does, this window is often where the most relevant prior art is likely to be found. As a result, even if a comprehensive search is made, the most relevant prior art may simply be hidden. On the other hand, a successful patent search that uncovers a reason not to proceed with the patent application can save you the considerable expense required to pursue patent protection. Saving yourself from unnecessarily spending these costs can be very beneficial. Accordingly, it is worth considering how likely a patent search will be worth the time and expense in your specific situation.
If patent protection is to be sought, preparing and filing a patent application leads to the examination of the application by the patent office. A successful examination leads to the patent’s issuance. When a patent issues, it provides the owner the ability to prevent others from making, using, or selling the patented invention by granting the exclusive rights to the invention to the patent owner. A detailed example of the steps of the patent process, along with the costs and timelines can be found here.
When well-crafted, a patent portfolio provides exclusive rights in the innovation and helps to provide a competitive advantage in the marketplace. As discussed more below, that competitive advantage can help build the value in the trademarks.
For inventions that are based on, or that incorporate subject matter that is difficult to reverse engineer, trade secret protection is an alternative, and sometimes preferred, mechanism for IP protection. Like patents above, the protection offered by trade secret protection can provide exclusive rights in the innovation that help to provide a competitive advantage and build the value in the trademarks.
There is no registration process for trade secrets, you simply need to maintain the confidentiality of the secret. Using non-disclosure agreements and other confidentiality measures can be helpful in demonstrating the efforts you’ve taken to maintain the confidentiality of a trade secret, but the real key is that trade secret protection is only effective for inventions that competitors won’t be able to figure out based on the public facing aspects of your product and business. And that’s your competitive advantage; if they can’t figure it out, they can’t copy it.
In the software space, trade secrets are most often found in the “black box” algorithms that drive the transformation of data within the platform. Particularly in instances in which your software is not patentable, trade secret protection may be the best protection for the innovation.
Copyrights protect original works of authorship fixed in tangible media. In the software space, copyrights are most often used to protect the code itself. While patent protection is adapted to protect the functionality of the software, copyright protection is adapted to prevent piracy of the code. In other words, a copyright registration for your software helps limited unauthorized copying and distribution of your software, but it won’t prevent a competitor from developing their own version of your product.
Although the registration process is not nearly as complex as either the patent or trademark registration processes, it can be helpful to work with an experienced IP attorney to protect your software.
Branding is important anytime a business is selling differentiated goods and services. In the software space, the software’s name may be its most important IP asset, as the name is how the software will be recognized and purchased by customers. It is important to avoid infringing others’ trademark rights through trademark searches and opinions and developing rights in distinctive marks yourself by registering trademarks.
In the long run, the business’s trademarks are often their most valuable IP assets. However, trademarks take time and effort to develop recognition and goodwill in the marketplace. In order to have the space in the marketplace to build that goodwill, the patents and trade secrets need to hold competitors from copying your unique offerings and enable you to build your brand. This is one of many reasons it is important to strategically build a coordinated and thoughtful trademark strategy from the outset of the business or product launch.
RPL’s attorneys have a strong background in software IP protection. RPL’s managing attorney, Patrick Richards, has written, licensed, and enforced software patents his entire career. In addition, Patrick is a co-founder and chief strategy officer of Resonance Medical, LLC, a health-tech company developing software for neuromodulation and other sensory enhancing devices. Since Patrick started RPL in 2009, the software industry has been RPL’s busiest practice with some of its biggest successes.
RPL protects IP for financial institutions and other businesses providing financial services, including trading services, payment processing and more.
RPL works with clients to protect their mobile app IP with strong and enforceable patents, trademarks, copyrights, and trade secrets.
RPL protects wearable technology inventions from smart watches and fitness trackers to innovative clothing and accessories and medical products.