Is Software Patentable?

When people ask me if software is patentable, it starts a long conversation. 

There are so many different types of software: DVD, apps, operating systems, SAAS, firmware, machine code...

And there are so many ways to protect these different types of software: trade secret, copyright, patent, trademark, licensing agreement...

Most "software" doesn't even get compiled into a program. HTML and JAVA code are languages that make websites work, but it's not compiled into a standalone program. The Copyright Office doesn't consider HTML to be copyrightable. This might or might not be upheld in some future litigation. 

Trade Secrets

Software is protectable as a trade secrets so long as reasonable measures are taken to keep it secret.

HTML is not secure. It can be seen by anyone. So, if you're keeping your SAAS as a trade secret, you'll need to take some action to prevent anyone from seeing the code. Encrypting source code, limiting access, and confidentiality terms in employee and end user agreements are good ideas and a place to start.

If you want a checklist with more ideas, enter your information below, and we'll email you our most recent recommended checklist for securing trade secrets in software.

Copyright

All original creative works of authorship, including software, are automatically copyrighted from the time it's fixed in a “tangible medium of expression” (i.e. stored in a way that makes it retrievable).

If the software is going to be published, then registration of a copyright in the software gives extra benefits:

• the right to sue;
• presumption of ownership;
• attorneys’ fees, if registered within 3 months of publication or before infringement takes place;
• statutory damages

Registering a copyright in software is not straightforward. You have to know what portion of the software was created by you or your company or for you or your company.

You’ll need a work made for hire agreement and/or assignment if the software was created by others.

The copyright in the portion that was created by or for you is what you own.

Any third party licensed libraries or the like must be disclaimed (or left unclaimed if separable from the portion copyrighted).

It’s a good practice to keep documentation of your software development process and what code was actually developed from scratch during the process, who created it, what agreements were the rights to the code transferred under, and any portions of the code that were licensed from third parties and what license.

Open source has it’s own issues. So make your copyright attorney aware of any open source licenses that your code is subject to (and the type of open source license).

If you want Paradies law to help you with registering your copyright, you can start here using our automated form to collect everything that is needed (a special fee of just $500 is available to iPscaling customers and will be paid upon completion of the form).

Now, about patenting software…

Not all software is able to be patented.

The software must be “patent eligible” under Section 101, new under Section 102, and nonobvious over the prior art under Section 103. You’re going to need a patent attorney for this, a good one.

It’s not easy for even a patent attorney to say what will or won’t be able to be patented for software inventions. The law is continuing to evolve in this area so fast. 

Software that operates a machine may be patentable on its own or as part of the machine. Software that affects the operation of a computer, making it faster or better in some way, is probably patentable.

However, software that provides financial services, improves human interactions, merely performs mental steps, encodes a business method, or the like is probably not patentable.

Conclusion

Use a state bar certified IP attorney & U.S. registered patent attorney for protecting your rights in software. This evolving area of law is not for the novice DIYer. If you want to try this on your own, then start by owning everything! 

The Entrepreneur's Guide To Owning Everything series includes OWN:copyright (work for hire) that will give you the agreement you need to own all the rights in the software for just $29! 

Be prepared to pay extra for hiring the best attorney that you can find if you want to patent a software invention.

Or schedule a live iPmasterclass one-on-one with Chris Paradies for a flat fee of $250 to review your procedures and get suggestions for terms to add to your software end user agreement and/or terms of service and/or how to protect your rights in software. 

You and your IP attorney may have to collaborate to find a way to protect your IP rights in software, as trade secret, copyright and patent law may not be entirely adequate for protecting your software. It's a gray area that doesn't always have an easy answer.

Think about ways that you can distribute your offering without giving others access to the software. Can it be protected by trade secret law? How much about the operation of the software can be hidden from the end user? What terms of use and conditions can you place on the use of the software?

To get a link to download the iPscaling trade secret checklist, enter your first name or nickname and email below: