How to determine whether software is patentable - Part 3

This is part 3 in a series of articles on how to determine whether your software is patentable. If you are an inventor, an executive at a tech company, or a patent lawyer outside the U.S., this will help you to at least make a first pass determination of whether your software is worth considering for patent protection. In each podcast in this series, we cover one criterion in each episode that you can use to evaluate whether your software is likely to be patentable.

In the podcast episode, you will learn:

• How to avoid the most common pitfalls when it comes to obtaining software patents
• How to maximize the value of your software patent portfolios
• Whether your software solves a problem that is necessarily rooted in computer technology or solves that problem using a solution that’s necessarily rooted in Computer Technology
• DDR Holdings vs Hotels.com case in the Federal Circuit

One way to determine whether some new piece of software solves a problem that is necessarily rooted in computer technology is to determine whether it solves what we sometimes call a technical problem.  An example of what would be considered a solution to a technical problem is software that solves the problem of how to transmit data over the internet using a particular networking protocol. That is a problem that is necessarily rooted in computer network technology even though the broader problem of transmitting messages is something that you could say is not necessarily rooted in computers because people send paper letters by postal mail. As you might guess from this, there is room for judgment and creativity in how you define the problem, and that is another reason that I strongly recommend that you work with a patent attorney who specializes in software patents when trying to evaluate these criteria.  You might look at a piece of software that sends messages over a network and say that the problem is “how to send messages over a network more efficiently” and conclude that this problem is not necessarily rooted in computer technology. If, however, you define the problem more narrowly as the problem “how to send messages over the internet using networking protocol X,” then you might conclude that the same software is solving a problem that is necessarily rooted in computer and networking technology just by defining the problem differently.

One other way to demonstrate that your software is not an abstract idea, and therefore is eligible for patent protection, is to show that the way in which the software solves the problem is necessarily rooted in computer technology, even if the problem in general is not necessarily rooted in computer technology.  Proving this requires both a solid technical understanding of the invention and a nuanced understanding of the law.

I hope you’ve found this criterion for determining whether your software is patentable to be useful.  Join us next time for the fourth, and final, installment on how to determine whether your software is patentable.