How to Claim a Software Patent

Once a new computer program has been released to the public, only a software patent application can protect the new ideas, new concepts, and new methods of the software system. By filing a software patent application, you secretly reveal your new ideas to the US Patent Office, preferably, before you begin publicly using, selling, or publishing your software. Before filing formal software patents, informality may be appropriate for entrepreneurs who can accept some legal risk and prefer to focus on software sales and development.

Click the links to go to the legal strategies below that teach how to control the expense of a software patent application by using informality:

Tasks and Costs of a Formal Software Patent Application

Formal software patent applications may require significant attorney time and expense. A software patent attorney will spend many hours preparing the application by performing necessary tasks, such as:

  • Searching for similar software and software patents invented before your software (“prior art”).
  • Analyzing how the software functions and provides commercial advantages.
  • Writing detailed patent claims to identify the new elements of the software.
  • Preparing a written disclosure (“specification”) describing the various ways that the software could be produced.
  • Drafting diagrams (“drawings”) of the software’s claimed processes and systems.
  • Filing the patent and supporting paperwork: declarations, forms, information disclosure sheets, copies of prior art, and application data sheets.

If you cannot compromise on the quality of your software legal rights, you should file a formal software patent application. Formal software patent applications usually require 2 to 4 weeks to complete. The cost to perform these steps is typically $6,000 to $12,000.

An Alternative for the First Year: Focus on Sales and Development, Not Legal Rights

You can file an informal, software provisional patent application based on your source code. Informal patent applications are not reviewed by the US Patent Office during the first year. This type of application can save thousands during the first year, but, there are a few drawbacks.

Two Reasons to Avoid Informal Software Patent Applications

There are two primary disadvantages to using source code as an informal software patent. First, your initial source code will later become publicly available when the Patent Office finally grants the software patent. Usually, this does not happen for many years while the patent examination process continues. During these years, software development also continues. The initial source code becomes less valuable as bugs are fixed, user interface is refined, and functions improved.

Even later, if secrecy becomes important, the patent application may be expressly abandoned. Abandonment ensure that the the source code does not become public by publication at the US Patent Office. Finally, filing a copyright application can directly protect the source code even after the publication by the US Patent Office.

Second, courts require all applications (formal and informal) to fully disclosure the software invention. If not, they will fail to meet the legal requirements of a patent grant. So, even though the Patent Office will not review an informal application, the application must fully disclose the invention. Since the source code is the blueprint of the software, it seems very likely that the disclosure is full and complete.

Still, no lawsuit has tried the underlying legal theory of writing a patent application using primarily the source code of a patent. However, common sense will tell you that the source code IS the invention, and, therefore, a full and complete disclosure of the invention must be made when including the entire source code.

Minimize First Year Legal Expenses

Using your source code, we can submit an informal software patent application. This provides a few attractive advantages. First, using the source code as the disclosure for a patent application minimizes the attorney effort in preparation while  accurately describing the software invention, as required by law. This keeps the cost as low as possible: no searching, no analysis, no diagrams, no legal drafting, and no claims are needed.

Create Licensable, Transferable Legal Assets

Even before the US Patent Office reviews the software patent application, rights are created. The patent application can form the basis for collecting royalties from competitor. The software patent application can be licensed, exclusively or non-exclusively. The software patent application can be listed as a legal asset on a balance sheet. The software patent application can be sold prior to review or approval by the US Patent Office.

 Commercialize Your Software Invention

During this first year, you can market and sell your software. A successful software product may produce sufficient revenue to help pay the costs of the ongoing patent process. This helps focus the initial budget for the software on marketing, sales, and product development.

Maintain Source Code Secrecy

The source code used in an informal software patent application must be published for approved patent grants. Before final approval, the source code remains secret. At any time before issue of the software patent, the rights in the patent applicaiton can be formally abandoned, and, the source code will not be published.

Our Fixed-Fee Informal Software Patent

The least expensive way to file a software patent is using the source code of the software as the entire, informal application. This fully discloses the one known, best way to accomplish the software invention, and should meet the legal standards required during litigation. During the first year, this minimizes attorney time, which keeps the cost low. Our $999 Informal Software Patent Application includes:

  • Legal representation by licensed patent attorney before the US Patent Office.
  • Guidance to prepare your electronic source code for use in a patent application.
  • Preparation of provisional patent application forms.
  • Creation of source code CDROMs in accord with patent office rules.
  • Filing by US Express Mail Service.
  • Monitoring of patent application status.
  • Fixed-fee estimate for converting to formal patent application after one year.

Informal software patents are only appropriate for those who prefer to focus on building their software business and are willing to accept some legal risk. This service requires about 7 business days. Before a patent grant will issue, you must refile a formal patent application within one year and successfully respond to all Patent Examiner requirements, all at additional future costs.