How to Keep, And Lose Patent Protection

Infotech and the Law

Last issue's column described trade-secret protection as an effective mechanism for protecting software products. The practical constraints of the marketplace, however, dictate disclosure of many aspects of the product to prospective customers.

In recent years, patent protection has become more and more prevalent in the software industry.

A utility patent provides the broadest scope of legally available protection. If properly drafted, a patent can potentially secure the exclusive right to the functionality of the product - what the product does. Of course, in return for the exclusive right, the details of the product, or at least the details of the product relating to the inventive concepts, must be disclosed to the public and become the property of the public at the end of the life of the patent.

In a nutshell, a patent is an agreement between an inventor and the government: The inventor teaches the public how to make and use the invention and, in return, the government gives the inventor the right to prevent others from making, using or selling the invention for a period of up to 17 years from the date that the patent is granted. At the end of that time the public is free to make, use, and sell the invention. Patent protection is available for inventive (novel and objectively unobvious) aspects of software. However, the ability to obtain patent protection can be lost through, among other things, prematurely disclosing, offering for sale, or offering to license, or publicly using.

Most countries' patent statutes expressly preclude obtaining a patent under circumstances where the invention is considered not to be novel. These include instances where the invention has already passed into the public domain (i.e., become public property) or has already become the property of another and used in public.

These circumstances are referred to as statutory bars. In the United States, the patent statute provides a one-year grace period in which to file a patent application; a patent is barred if a patent application is not filed in the U.S. within one year of:

  • The first publication anywhere in the world describing the invention; or

  • The first public use or offer for sale (or offer to license) in the U.S. of a product employing the invention.

Under this statute, the inventor's own publications can be a bar and an offer for sale need not be public or even result in a sale. Most countries other than the U.S., however, do not provide any grace period; any commercial use or written description of the invention published before the effective filing date of a patent application in most countries will preclude patent protection.

However, the U.S. has treaties with most countries regarding patent applications filed in the U.S. when corresponding applications are filed in another country within a certain time period, typically one year.

In such circumstances, the foreign application is treated as if it was filed on the same date as the U.S. application, and publications subsequent to the U.S. filing do not operate as bars.

Historically, the U.S. Patent and Trademark Office generally viewed computer software as a type of mathematical algorithm, which under U.S. patent laws is nonpatentable subject matter. However, over time and after some tug-of-war in the courts, the PTO began to accept computer software as patentable processes.

While historically controversial, it is now well established that patent laws can and do protect inventions, even though those inventions may be implemented in software. In some instances, however, patent protection is inapplicable or inappropriate.

For example, technology worthy of protection may not rise to the level of an invention (novel and unobvious) required by the patent statute.

Moreover, obtaining a patent may take several years, longer than the market life of many software innovations. Patents are also national in territorial scope; with the exception of Europe, patent protection must be separately secured in each country where the software is to be protected. Obtaining such protection can be prohibitively expensive.

On the other hand, patent protection is the only effective mechanism for protecting against independent development of the software by others. It is also typically the only effective mechanism for protecting the functionality of a program.

Obtaining patents only in strategic markets can minimize the expense. In addition, depending upon the timing of the patent application relative to the development cycle of the software, the amount of detail required to be disclosed in the application can be controlled and aspects of the product developed after the filing of the application for the patent retained as trade secrets.

As a result, patent protection of software can provide the inventor the broadest scope of legally available protection, and it is a valuable mechanism for protecting those aspects of the software that cannot effectively be protected as a trade secret.

Michael A. Lechter is an attorney with Meyer Hendricks Victor Osborn & Maledon, Phoenix, Ariz. He is also an electrical engineer.


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