The following is material presented at the March 23 Patents and Pizza
seminar and is intended as a simplified primer on software patent law basics
for general background information only. The APL Office of Patent Counsel
or a patent attorney should be consulted to provide counsel on specific issues.
Software: To Patent or Not?
Jeffrey P. Kushan
Powell, Goldstein, Frazer & Murphy, LLP
Options for Protecting
Intellectual Property in Software
Protect software technology through
three forms of intellectual property
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Copyright for the source & object code
Trade secrets for source code and data structures
Patents for functional aspects of software (i.E.,
Processes, methods, systems, distributable code, data
structures)
 Business method patents!
Copyright Protection in Software
Copyright attaches upon the act of
“fixation” to the source code and the
object code
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Protection against literal copying of object or
source code
Difficult to use copyright to protect
functionality of software
Protect original database collections, source
and object code
CHEAP!!! (registration $25)
Trade Secrets in Software?
Publish or perish? [Trade secrets perish
with publication!]
 Must take steps to keep secret
 Must have commercial value
 Secret cannot be discernable from
inspection of commercially distributed
products
 No protection against reverse engineering
Trade Secrets in Software?
You can enjoy trade secrets to a limited extent
even while obtaining patent and copyright
protection in computer software
 Registration of copyright does not require
disclosure of complete source code
 Patent protection does not necessarily mandate
disclosure of source code, but does require
disclosure of best mode of practicing invention
known at time of filing application
Patent Protection for Software
What is patentable?
 Any new, useful and non-obvious process, system
or article of manufacture
 This means
 Processes implemented entirely within software
 Processes that have software-driven computers as one
component of larger process
 Computer systems “configured” to have a particular
functionality via software
 Computer readable media with ordered data (e.g.,
executable code, data structures implemented on a
physical “memory”)
Patent Eligibility
The “utility” requirement (35 USC 101) has a
checkered past for software-related
inventions
Patents may not be granted on abstract
ideas or laws of nature
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Unapplied mathematical algorithms are “laws of
nature” or “abstract ideas”
A practical application of a mathematical algorithm is
a patentable process invention
How Does the PTO Draw the Line?
Unsafe harbors
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Pure mathematical formula, or process of solving
mathematical theorem
“Functional” descriptive material per se (e.g.,
source code, data structure)
“Non-functional” descriptive material on medium
(e.g., music on a CD)
Energy, magnetism per se
Process that manipulates abstract ideas, concepts
or pure numbers without any practical real world
application
How Does the PTO Draw the Line?
Safe harbors
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A unique programmed computer
Computer-readable medium with ordered data or data
structure
Process that manipulates physical objects (i.e., computer
performs one step of a multi-step process)
Process manipulates data representing physical objects or
conditions to achieve a practical application
 Measure physical object
 Process data
 Display/analyze result
Recent Developments
“Business method” patents
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Not so new concept

State Street v. Signature Financial Group
 Data processing system for managing investment
portfolios
 Claim was actually drawn to an apparatus (computer
system) configured to support the system
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AT&T v. Excel
 Method of generating message record with a unique
interchange originator indicator in the record
 No computer is in the claim as a requirement
So, What Do You Patent?
Example: Adobe Premiere (video editing
software)
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1. A method for editing a video program which includes a sequence of clips
and transitions between the clips, the method comprising the steps of:
(a) displaying a time line;
(b) generating a display representing the video program clips by digitizing
and thereafter simultaneously displaying a frame from each of a plurality of
the digitized clips on tracks along and in a direct time relationship to the
time line the width of the displayed frames representing the time duration
of the clip represented by that frame, together with transition icons, the
transition icons representing the transitions between the plurality of the
digitized clips;
(c) editing the video program by modifying the display.
Practical Considerations
Is the invention new and nonobvious?
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Are you aware of similar technology that has been
publicly disclosed?
How close to what you’ve developed?
Is the invention worth patenting?
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Is the software an “intact” software product or have
you developed a technique or process that can be
implemented more broadly and independent from your
own implementation code?
 To protect the code, rely on copyright
 To protect the functionality, rely on patents
Practical Considerations
What is the end goal of your efforts?
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Sales of compiled program code (e.g.,
packaged or non-packaged software)
Licensing use of novel, nonobvious technique
or process
Is the invention a broadly licensable
process/system or is it something to be
licensed to a single entity?
Practical Considerations
To evaluate invention, try:
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Identifying steps of a software method
Define data structure (unique or common/old)
System perspective (e.g., what are the
necessary components and what are the
functions performed by the components?)
Work with university patent counsel
Practical Considerations -- COST
Costs of pursuing patent protection in
US range from $5,000 to $15,000 per
application, and foreign protection can
add $85,000!
PCT is good way of buying time (up to
30 months) before having to file and
pursue foreign patents
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Use the time to find someone to pay for filing
in important foreign markets
Conclusions
Patents are not the only way to
protect your innovations, and
certainly are not the cheapest
Consider your inventions broadly
and how you would exploit the
investment in getting patent
protection
Check your budget!!
Thank You!
Jeffrey P. Kushan
Powell, Goldstein, Frazer & Murphy
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Phone: 202-624-3976
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Fax: 202-624-7222
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Email: jkushan@pgfm.com