Can I get patent for software application in US? How much it will cost?
The software could be protected by means of copyright as well as patents: Copyrights are straightforward and the simplest form of protection for the software code or source code
There are some advantages for copyright protection :
- It is much simple to protect software code by copyright
- Copyright is done as soon as the work is created
- a long period of protection ( life of the author plus 50 years)
But, copyright provides very limited protection to the software!!!
By its nature, the copyright is meant to protect the expression of the work!!! And not the concept behind the expression, procedures or methods, in many cases the idea behind the software code is an important asset to the business which can only be protected to an appropriate extent by means of patents. Hence the importance is given to winning a patent for the software!!!!
In most cases the software can be only minor part of the invention; it could be used with the hardware to perform certain functions which could be the solution to some technical problem!!!
In some cases, the software code is the instructions given to the microprocessor or microcontroller so as to enable it to perform a certain function which is solving some technical problem (the inventive step). And the solution is novel, non-obvious, and useful, in such case that software can be the patentable subject matter.
The main inventive step may also lie in the system or apparatus or an algorithm or the method etc… and software maybe just a part of the invention.
Any invention (including software invention) to be able to be patentable must meet the following criteria’s:
- invention is a patentable subject matter;
- the invention is capable of industrial application (or, in certain countries, be useful);
- it must be new (novel);
- it must involve an inventive step (be non-obvious); and
- The disclosure of the invention should be enabling.
How to Patent a Software Application, Mobile Application, or Novel Application in the United States
In today’s technology-driven world, software applications play a pivotal role in various industries. Whether it’s a mobile app, a novel software solution, or an innovative digital tool, protecting your intellectual property (IP) through patents is crucial to maintaining a competitive edge. This guide will walk you through the process of patenting a software application, mobile application, or any novel application in the United States.
Table of Contents:
- Understanding Software Patents
- What is a Software Patent?
- Types of Software Patents
- Patentability of Software in the US
- Preparing for the Patent Application Process
- Conducting a Prior Art Search
- Identifying the Novel Features
- Drafting a Detailed Description
- Filing a Patent Application
- Types of Patent Applications
- Choosing Between Provisional and Non-Provisional Patents
- Components of a Software Patent Application
- Navigating the Patent Examination Process
- Responding to Office Actions
- Working with a Patent Examiner
- Overcoming Common Rejections
- Post-Grant Considerations
- Maintaining the Patent
- Enforcing the Patent
- Leveraging the Patent for Business Success
1. Understanding Software Patents
What is a Software Patent?
A software patent is a form of legal protection granted by the United States Patent and Trademark Office (USPTO) that gives the inventor exclusive rights to a specific software invention. This means that the inventor has the right to exclude others from making, using, selling, or distributing the patented software without permission.
Types of Software Patents
Software patents typically fall into two categories:
- Utility Patents: These cover new and useful processes, machines, or compositions of matter. For software, a utility patent could protect the method by which the software operates, the process it performs, or the algorithm it uses.
- Design Patents: These protect the ornamental design of a functional item. In the case of software, a design patent could protect the unique graphical user interface (GUI) or visual elements of a mobile application.
Patentability of Software in the US
In the United States, the patentability of software has been a subject of debate, especially following the landmark Supreme Court case Alice Corp. v. CLS Bank International in 2014. According to the ruling, abstract ideas implemented on a computer are not patentable unless they involve an “inventive concept” that transforms the abstract idea into a patent-eligible application.
To determine if your software invention is patentable, it must meet the following criteria:
- Novelty: The software must be new and not previously disclosed in any prior art.
- Non-Obviousness: The invention should not be an obvious solution or improvement to someone skilled in the field.
- Utility: The software must be useful and have a practical application.
2. Preparing for the Patent Application Process
Conducting a Prior Art Search
Before filing a patent application, it’s essential to conduct a thorough prior art search. This involves researching existing patents, publications, and other public disclosures to ensure that your software invention is truly novel. The USPTO’s online database, Google Patents, and various other patent search tools can be used for this purpose. Engaging a professional patent attorney to assist with the search can provide a more comprehensive understanding of the landscape.
Identifying the Novel Features
Once you’ve conducted a prior art search, identify the unique and novel features of your software that distinguish it from existing solutions. This could be a new algorithm, a unique user interface, or an innovative way of processing data. Clearly defining these features is crucial for drafting a strong patent application.
Drafting a Detailed Description
A well-drafted patent application must include a detailed description of the invention, including:
- Technical Specifications: Describe how the software works, including algorithms, code snippets, flowcharts, and any other relevant technical details.
- Functionality: Explain the functions and processes that the software performs.
- Use Cases: Provide examples of how the software can be used in real-world scenarios.
3. Filing a Patent Application
Types of Patent Applications
In the United States, inventors can file two main types of patent applications:
- Provisional Patent Application (PPA): This is a preliminary application that allows you to secure a filing date while you refine your invention or prepare for the full application. It is less formal and does not require claims, but it must fully describe the invention. A PPA is valid for 12 months, after which you must file a non-provisional patent application to maintain the priority date.
- Non-Provisional Patent Application: This is the formal application that the USPTO examines. It includes a detailed description, claims defining the scope of protection, drawings (if applicable), and an abstract. The non-provisional application starts the official examination process.
Choosing Between Provisional and Non-Provisional Patents
For software inventors, starting with a provisional patent application is often advisable, especially if the software is still in development. This provides a year to further develop and market the software while protecting your IP. If your software is fully developed and ready for commercialization, you may opt to file a non-provisional application directly.
4. Navigating the Patent Examination Process
Responding to Office Actions
After submitting a non-provisional patent application, the USPTO assigns it to a patent examiner who reviews it for compliance with patentability requirements. The examiner may issue an Office Action, outlining any objections or rejections based on prior art or other concerns.
Responding to an Office Action requires careful analysis and often involves amending the claims, providing additional explanations, or arguing against the examiner’s objections. Working closely with a patent attorney during this stage can significantly improve your chances of success.
Working with a Patent Examiner
The patent examination process is often a back-and-forth dialogue between the inventor (or their attorney) and the patent examiner. Engaging in interviews with the examiner can help clarify the invention’s novel aspects and address any concerns more effectively.
Overcoming Common Rejections
Common rejections in software patents include:
- Abstract Idea Rejections: Based on the Alice decision, claims that are too abstract may be rejected. To overcome this, it’s crucial to demonstrate how your software invention applies the abstract idea in a unique and non-obvious way.
- Obviousness Rejections: These occur when the examiner believes the invention is an obvious combination of existing technologies. To counter this, you must argue why the combination is not obvious and how your invention offers something new.
5. Post-Grant Considerations
Maintaining the Patent
Once your software patent is granted, maintaining it requires the payment of periodic maintenance fees to the USPTO. These fees are due at 3.5, 7.5, and 11.5 years after the patent is granted. Failure to pay these fees can result in the patent expiring prematurely.
Enforcing the Patent
A granted patent gives you the right to exclude others from using your invention without permission. If you discover that someone is infringing on your patent, you can take legal action to enforce your rights. This could involve negotiations, licensing agreements, or litigation.
Leveraging the Patent for Business Success
Beyond enforcement, a software patent can be a valuable business asset. It can enhance your company’s valuation, attract investors, and provide opportunities for licensing or joint ventures. Additionally, a strong patent portfolio can be a critical tool in negotiations and collaborations with other technology companies.
to know more about costs read the section about cost of getting patent in US and the procedure
Cost of getting a Patent in United States (US):
There are two elements for the cost of getting a patent/filing patent in US:
- The Government fees for Forms, requests, and renewals.
- The Attorney fees for patent professionals
Here is the short answer for the attorney fees required to file patent in US :
- Novelty Search ($250 to $ 400)
- Provisional patent application drafting ($400 to $600)
- Non-provisional Patent drafting (from $1000 to $1,500) and after 1 to 2 years official fees $364 (micro
entity) - Responding to office actions (from $600 to $800) based on the number of objections received and its complexity.
- Notice of allowance (grant of patent) professional fees $100 – Official fees $240 (micro
entity)
The Steps, Procedure, Timeline and Cost for Patent in US given in a table format :
Note: steps highlighted in Orange color are either optional step or depends on case to case and are not mandatory to happen
| Sr. | Stages for Patent (links for more details) | Professional fees | Government Fees | Time required |
| 1 | How to go from Idea to Invention disclosure? Do I need patent agent of attorney | – | – | – |
| 2 | Signing Non-Disclosure Agreement (NDA) | – | – | 10 minutes to sign |
| 3 | Patentability / Novelty Search (Optional step) | $250 to $400 | – | 5 days |
| 4 | Drafting Complete Patent Application | $1000 to $1500 | 10 – 12 days | |
| 5 | Filing patent application | $200 | $364 (micro entity) | 1 – 2 days |
| 6 | Publication of patent application | – | – | After 12 months |
| 7 | Examination of patent application / Faster prioratised Examination is (Optional ) First time filer prioratised examination Track one prioratised examination | $200 | – First time filer prioratised examination ($ 0 ) micro entity – Track one prioratised examination ($840) micro entity | upto 1 Year |
| 8 | Office Action and Response | $800 | – | – |
| 9 | Grant of patent / Notice of Allowance | $100 | $240 (micro entity) | Depends on pendency at USPTO |
- Indian Patent Office, Govt. of India
- Patent Facilitator for Start-ups, Startup India Govt. of India
- Bachelor’s degree in Electronics and Telecommunication engineering.
- Author of multiple books on Patents and IPR including a best-selling book on “How to patent an idea in India” which has been selected as the “Memorable Business Book of 2018” by Amazon
- Books are included in the syllabus of Educational Institutions as textbook and reference book on subject of IPR and Patents
- For over 15 years, Prasad has helped protect the intellectual property rights (IPR) of more than 1800 clients, including individuals, entrepreneurs, and educational institutes. This includes patents, trademarks, designs, and copyrights.