Protecting intellectual property is crucial to establishing and maintaining its value. In a digital economy defined by 1s and 0s (and soon, qubits), rather than the physical machinery of industrial eras past, defining and protecting digital property is complex.
For an idea to earn a patent, it must be novel, useful, and non-obvious. Historically, IP is defined by the unique design and configuration of physical components that can produce a desired output. It was fairly easy to apply this standard to a machine. A machine’s benefits and the characteristics that support claims are observable and measurable. The furnace burned at a higher temperature; the machine assembled parts faster. Idea novelty was also easier to determine. Two machines could contain similar parts but were arranged differently to create a wholly new or significantly higher-quality output.
The value and ingenuity of software rest on a complex relationship between its configuration, its outputs, and user interaction with it. These provide a basis for protecting software as IP but there is no clear line to establishing a software’s patentability. The functions a software performs, the steps it takes to function, and the overall configuration of the computer itself could potentially be protected by patents, trademarks, or copyrights. Software, and the code that powers it, is less tangible than a machine. As a result, algorithms, machine learning processes, and some artificial intelligence programs are difficult to protect under current IP law because what truly differentiates them can be unclear.
Patents for Software
The challenge of patenting computer code is that it often represents an abstract idea. And while one cannot patent abstract ideas, one can potentially patent processes related to those ideas. If software improves overall computer functionality—such as increasing processing speed or the number of resources required to function, or it performs those tasks in a unique way—the software may be eligible for a utility patent. However, the same computer functionality can be achieved in multiple ways. Core code can change during the process of updating and maintaining it. These factors make utility patents a complex option for protecting IP software.
IP.com’s AI-powered innovation suite offers several tools for exploring software patentability, including InnovationQ+™.
Legal Precedent
The 2014 SCOTUS case Alice Corp. v. CLS Bank established a two-step process for determining whether the software is patentable. First, avoid abstract ideas. If it is an abstract idea, it must be “transformed” through its technical description. If your patent application’s claims and description include significant details about how a program’s code overcomes a technical challenge, it may be awarded a patent and survive the patent legal system.
A demonstration of these principles rests in the famous case Microsoft v. Enfish. Microsoft eventually won a patent for its database retrieval software after demonstrating the abstract ideas can achieve transformational status. Microsoft’s was an updated concept for the storage, organization, and retrieval of stored data. But its claims also covered software functionality that fundamentally changed the way self-referential tables operated. Under these rules, a number of software and software processes can be patented, including editing functions, user-interface features, compiling techniques, operating system techniques, algorithmic processes, menu arrangements, display presentations or arrangements, and program language translation methods.
Alternatives to Utility Patents for Software
Design Patents for Software
A promising avenue for software is design patents. Design patents protect the unique visual characteristics of a graphical item or graphic user interface. Design patents can cover both distinct technical configurations (functionality) and surface ornamentation (appearance). Both are valuable to software because good design typically follows function. In an era of precise UX/UI design, a software product with radically different functionality would be unlikely to appear the same on the outside when users demand interfaces that are cohesive with the product underneath.
Design patents have always been easier to receive than utility patents. Indeed, many avoid applying for them because they are perceived as low quality and therefore offering little protection. However, patenting GUI has several advantages over utility patents. The benefits of a design patent include:
- Easier to obtain than utility patents
- Can be obtained quickly
- Offers extensive protection when the design promotes software functionality
Defensive Publication
If you do not want to go through the risky patent application process, a defensive publication may be an option for your software. Defensive publications can protect market share and freedom to operate (FTO) by preventing others from patenting your software. This IP strategy may make more sense in an unpredictable legal environment. IP.com’s Prior Art Database (PAD) is built for scenarios where companies want to rapidly and affordably receive protection for software without committing to the cost and risk of the patent application process. PAD is an aggregator of prior art and technical information made available to IP specialists all over the world. PAD’s technical disclosures are delivered to patent offices globally. These features are useful for technology like software that easily crosses international boundaries.
IP.com’s PAD helps protect software as IP not only by allowing you to search all existing related prior art across multiple continents but publish in those database to make your publication discoverable almost anywhere.
Copyright for Software
Seeking copyright protection is a viable alternative to a patent and is often less costly. Copyright affords similar protections to patents, permitting you to reproduce, distribute, and license your software. Copyrights can be easier to enforce. Copyright protections were recently expanded by the Court of Appeals’ decision in Orcale v. Google which established that similarly structured, sequenced, and organized code to achieve a similar output is protected by copyright.
Trademarks for Software
A trademark grants the owner the exclusive use of a word, name, or symbol (mark) to describe a product and distinguish it from other products. A trademark has the benefit of indefinite protection, provided the owner regularly renews it. However, if the owner stops using the trademark for three years or more, this is considered “abandonment” and may result in losing the trademark. Although trademarks don’t protect designs or functions, they can help differentiate your product in the marketplace by protecting its name or tagline. Trademarks can protect a brand but not much else.
Open Source Software
Open source has become commonplace due to the difficulty of protecting software as IP. IP.com has previously covered the benefits and downsides of open source software. However, monetizing open source code can be difficult. Protecting your software as IP with one of the methods above still offers the best chance for ROI and company growth. The IP landscape can turn on a dime with various legislation and legal rulings. To wit, several major cases are on the docket for 2023 with the potential to impact IP and software.
There are also a number of obligations to open source software your firm may be unaware of. Attribution, customer and developer notifications, and restrictions on associated IP are required. Those aiming to make software open source in some cases and not others may have difficulty tracking its use, which also can expose firms to litigation if it is misused.