When people ask “is software patentable?,” they are typically an inventor or developer of a product that runs on software, and they want to know if they can protect their invention. For example, it might be a smartphone app, a website, or a device or system that uses software to perform various functions. The real question is therefore whether software-related inventions can be patented. The answer to this question is YES. Unfortunately, the “how” of protecting these inventions is what often leads people to the wrong answer.
Patenting Software Without Patenting Software
An issued patent allows the owner to exclude others from making, using, selling or offering an invention covered by the “claims” of the patent. These claims are analogous to the legal description of real estate. Just as a deed defines the bounds of land that is owned, patent claims define the bounds of intellectual property that is owned. Under the current state of patent law, patents cannot specifically lay claim to software. For example a patent claim that recites “a software product that performs functions X, Y, Z, etc.” would not be allowed.
However, a patent claim to “a computer configured to perform functions X, Y, Z, etc.” could be patentable. A patent claim to “a computer implemented method that includes the steps of X, Y, Z, etc.” could also be patentable. A patent claim to “a computer readable medium that configures a computer to perform functions X, Y, Z, etc.” could also be patentable.
Accordingly, while software itself is not literally patentable, software is effectively patentable by drafting a patent application in the right way. This illustrates one of the many reasons why working with a patent attorney is so important, especially for software-related inventions.
Don’t Get Bogged Down in the “How”
The takeaway here is that software-related inventions can be protected with patents by protecting a computer system that performs certain functions, a computer implemented method, and/or a non-transient memory that configures a computer to do things. However, don’t focus on these technical details when working with your patent attorney to protect a software-related invention. Instead, focus on the functionalities of the app, device or system that you want to protect and let your patent attorney handle the minutiae of patent law that dictates how this is done. Patent law is always in flux, and a good patent attorney will know how to protect software-related inventions as the law changes.