Patents are an important business asset for companies in any field, but in the software industry these days, it seems like they’re king. But after several recent Supreme Court rulings, Bilski v. Kappos and Alice Corp. v. CLS International, the path toward securing strong software patents has become trickier.
Fortunatley, Judd Hollas, CEO of EquityNet, a business crowdfunding platform, has recommendations for getting software patents approved. EquityNet has five software patents, and has learned firsthand how to navigate these tricky waters, especially in the post-Bilski world. Click on for the top five tips on how to get your software patents approved.
STEP 1: Know what is patentable
This seems like a basic step, but it is an essential starting point. In order to be patentable, your technology needs to be novel, have utility and be non-obvious. It also has to be something manmade, though that is not usually a factor. Before you put pen to paper, Hollas recommends familiarizing yourself with these factors and making sure your idea fits all four criteria. In one of his original patent Hollas decided to file for a utility apparatus patent rather than a business method, and knowing the difference between the two, and why his idea fit in the former category, was an important first step for him.
STEP 2: Do a thorough prior art search
“You need to know what the landscape looks like,” Hollas explains. “You have to look at the U.S. and worldwide, consider everything from prior applications and grants to thesis papers and college research – anything you can discover.” He points out that patent examiners are overloaded and tend to lean on prior art searches within patent databases, often failing to go broadly into the educational domain. This may allow you to get the patent, but when trying to enforce, could present trouble. If the examiner did not find the prior art, you may end up having your patent thrown out.
STEP 3: Hire a patent attorney
Hollas says out that there are some semi-automated Internet tools out there that can let you file a provisional patent, but they are not always the best idea. “In my experience, patenting an invention is a highly skilled exercise. I am not confident that any online service could do a very good job at it,” he says. “The money you invest in the attorney will increase your odds of obtaining a grant, and you’ll get a good return on your investment.” Hollas also recommends finding an attorney who knows something about your field, as expertise– be it software, medical devices or what have you – will prove invaluable.
STEP 4: Consider applying for a provisional patent
This is an especially good idea for smaller businesses or entrepreneurs. Starting with a provisional patent allows a company to do without counsel for a time, getting the attorneys involved within the yearlong period leading up to the filing of the full application. This, says Hollas, should improve the chance of success, establishing an earlier priority date and allowing more time to write an application, while keeping an eye open for prior art. This is especially the case in fast-moving fields like the software business. “Web software moves so fast that the earlier you can get the date stamp in there the better,” Hollas says.
STEP 5: Be as detailed as possible
When writing the patent application, Hollas recommends being as detailed as possible. This is good for getting the patent granted, but it also gives you flexibility in adjusting claims at a later date. You should be forthcoming on disclosing any potential prior art that you are aware of. “One reason patents get invalidated is that applicants did not follow rules on the responsibility to disclose prior art,” Hollas notes.
By following these five steps, any business owner or inventor can set him or herself up to be in the best possible situation to get software patents approved.