In this article, we will go through some tips on how to make a good software patent, and how to increase the patentability of an idea. Most of these tips can probably be googled, but here I focus on software patents specifically, and aim to make this easy to understand for beginners who may not know of the area well, or have no prior experience in patenting, yet are interested in exploring this possibility.
Patent basics
A patent is a novel idea of an invention that is documented and filed with a patent body (such as World Intellectual Property Organization WIPO or US Patent Office USPTO). Patenting an idea gives protection to the invention from others copying and profiting from it. The patent idea usually solves a previously unsolved problem, or solves it in a better or more efficient way compared to existing solutions.
In order to be approved, a patent has to pass the patentability criteria such as novelty, non obviousness, usability etc. In plain English, some of the guidelines are as follows:
- The idea being patented has to be unique in the world, i.e. nobody else should have published or used the same idea
- It cannot be simply a combination of existing ideas that other experts in the same area would think as obvious
- It has to have an actual utility, or perform a useful function
- It should be easy to detect infringement of the idea, if someone has copied it
- It should be feasible to implement the idea using current knowledge and technology
There are multiple types of IP (intellectual property) such as trademarks, copyrights etc and patent is just one of them. There are also multiple types of patents such as design patents, standards patents, utility patents etc. The common types of ideas that software engineers or tech companies might like to patent are utility patents, that present the design of a system or method that performs a utility. Standards patents are more common in a few domains such as the networks domain, where the inventor is proposing a new standard in, say, mobile wireless technology, and could get money out of licensing the patent to third parties.
It must be noted that filing a patent takes several years before the patent office, for a patent examiner to examine it, search for prior arts, obtain any clarifications from the inventors and finally approve the grant. This time can be as low as 2 years and as high as 5 or 6 years in some cases. So if a company claims “patent filed” on a product, it does not mean that patent has actually been granted. A significant percentage of filed patents are eventually rejected by the patent offices.
Why patent an idea
Any new and novel idea need not be patented to prove to the world that the inventor got it first: It can also be published as a research paper, technical report or white paper, or made public in a blog post or article. One may choose not to publish the idea anywhere and keep it as a trade secret, so that competitors may never get to know of it in the first place. There is also an avenue called “Defensive Publication” which is not as strong as a patent, but gives some rights for protecting the idea or invention.
The main reason for filing a patent for an idea is the possibility of future monetary benefits to the inventor or the company, along with giving due credit to the inventor for the inventive idea. A patent gives the inventor legal protection from others infringing it, for a fixed period (usually 20 years). In this time, anyone else who wants to use the idea would now have to negotiate with the inventors for a licence or for buying the patent from them.
If it is a small company or startup with only one novel idea as the USP (unique selling point), it makes sense to patent it. A patent is a form of property or asset and usually carries a monetary value. It also results in prestige and credibility in the minds of the public (even though it might not always be justified), i.e. a company that has obtained granted patents for its products must be a good company.
Filing a patent can be useful for an inventor or a company to safeguard their inventive idea. It can be used in patent portfolio negotiations between companies, where a group of patents is licensed as a unit. A patent filing may be out of a defensive or offensive motivation. This means, a patent might be filed to keep others from suing the inventors or company (defensive), or it might be filed primarily to sue others and make money out of them (offensive). Patent trolls (individuals or companies) have been known to do exactly such a thing.
Components of a patent filing
In order to file, a patent idea needs to have enough information about the following components:
- Title: a short line that describes mainly the domain of the patent idea. Typically it does not mention the actual unique claim.
- Abstract or short description: This summarizes the patent idea and its unique claim in a few short sentences, typically not exceeding 150 words.
- Long description of the invention: This is where the inventor describes the idea, the technical details of its implementation, and the use cases in full detail.
- Diagrams/ flowcharts/ illustrations: These are added to the description to give a better idea of how the patent is to be used, how it is implemented, what is the user interface, the system diagram, architecture, flow diagrams.
- A list of claims. The claims are the main legal part of the patent, which would be examined to determine whether the patent should be granted or not. This can be either as system based claims or method based claims. There can be independent claims and dependent or derived claims, derived from the independent claims.
The wording of an independent claim might be something like “System and method for <some function>, comprising <the components of the system or steps of the method>”. A dependent claim may have a wording such as “System based in claim 1, where <some modification to the independent claim>”.
The basic method of patenting is quite simple: make a document with a description of the idea, add diagrams, flowcharts and technical details of how to achieve or implement the idea. Then write the set of claims. Then file the document, in the requisite format along with details of inventors, with the patent office, along with the patent filing fees. Usually most offices have the option for online filing of patents.
It is better to include as many diagrams, flowcharts and algorithms, equations, illustrations as possible. This gives a better understanding of the idea and helps to convince the patent examiner that the idea is feasible to implement and so should be granted, if it is found novel. Also, it is better to think about the original idea and include multiple use cases of the idea, and multiple ways in which the idea can be extended. This covers the possibility of someone stealing the idea and claiming the different use case is not covered by the patent.
Are software ideas patentable?
It is indeed more difficult to patent a purely software idea than an idea that is implementable in hardware, or has a mixture of hardware and software components. Part of the reason is that it is difficult to prove that a purely software idea (or ‘method’) is indeed patentable and is not simply a combination of existing methods.
Also, a pure software algorithm is quite difficult to patent. Someone could simply argue that the software algorithm is derived from research papers or break the algorithm into a number of small steps and claim that each of the small steps is already well known or published.
Besides, if the software based patent candidate idea does not have a front-end (i.e. it runs in the background), it is difficult to prove infringement of it in a court, since someone could claim that they reproduced the same functionality using a different software algorithm. So it is better for a patent to have a front-end or user interface as an integral part of the invention.
The ‘system’ ideas, which try to patent the whole system of hardware and/or software components, are easier to prove that they are indeed novel. So a system idea is better (and stronger) than a method idea. Similarly, a method idea with a front-end is better than one without a front end.
Also, just because a patent is granted by a patent office does not mean that the inventor or company can actually make money out of it. It should be something that others (competitors) might be tempted to copy in order to get revenue from selling the product that holds the patent idea.
Cost of filing a patent
The cost of filing a patent varies enormously, from a few thousand rupees (around a couple of hundred dollars) in the India patent office to a few thousand dollars in USPTO or WIPO.
If one engages a patent agent or attorney to file the patent for them, the cost will probably go higher. Alternatively, one can simply read some existing patents, get an idea of the structure and draft one themselves. However, a trained patent attorney might be able to draft a patent in a way that makes it more likely to be granted.
Governments in some countries have set up incentives for small companies and inventors, such as lower patent filing costs for startups which meet certain criteria.
Tools for conducting a prior art search of an idea
Before drafting a patent, one should make sure the idea is not existing already. This is because drafting a patent needs considerable time and money, one should make sure it is actually worth the effort. Prior art search is the step where one searches in the literature to make sure the idea being claimed as novel is not already in the public domain.
Patent search tools such as google patents (https://patents.google.com/), WIPO Patentscope (https://patentscope.wipo.int/search/en/search.jsf), USPTO patent search, the Lens (https://www.lens.org/), Thomson Reuters patent search tools etc. can be useful tools for conducting a prior art search. One should put in the keywords related to technologies used in the idea and then examine to resulting list of patents returned by the search tool to determine if the existing patent is covering the whole of part of the claimed idea.
Since the idea might already be published in the research domain rather than as a patent, one should also search in academic or research papers, using Google scholar or IEEE Explore or Microsoft academic search or any other academic paper search engine (https://en.wikipedia.org/wiki/List_of_academic_databases_and_search_engines). One should additionally do a general web search (using a search engine such as Google or Bing).
Strategies to make an idea more patentable / stronger
There are certain strategies that can help a budding inventor to make one’s idea more patentable.
The best strategy for complete beginners would be: go to google patents and read some of the existing patents, see how the patent language works. There is a certain amount of legalese there, that one needs to be familiar with.
After that, one can use one of these strategies to make or enhance a patentable idea:
- Design thinking or user centered thinking. This means thinking from the point of view of the users and other stakeholders of different ways to solve the problem. One can conduct different kinds of quantitative or qualitative (via questionnaires or interviews) user surveys to get an idea of the actual problems faced by the users from their point of view, so that the solution, in the form of a patent, can be much more comprehensive.
- A strategy called TRIZ, which enables one to expand the idea in different directions by systematically examining all permutations of the idea. An example of its application can be, generalizing a specific problem, trying multiple creative solutions to the problem, then selecting the solution that best fits the specific case. Another example can be, breaking a machine into components and then thinking how each component can be replaced so that the overall efficiency of the machine is maintained but the components are cheaper, or that the cost is maintained but the efficiency is increased in some way, or that the machine does an additional function that solves a problem it could not solve before. A number of websites explain how TRIZ can be applied in the software domain (such as https://triz-journal.com/triz-software-40-principle-analogies-sequel/)
- One should think creatively about extending the original idea in all possible directions, applying it to all possible use cases, all possible embodiments or ways of applying it, all possible kinds of extensions in different domains, etc. This has the benefit of making the patent stronger, so that any competitor would not be able to bypass it in order to solve a problem and would be forced to pay royalty fees to license it.
- One could build a design prototype and/or conduct user trials to get some idea if the invention actually solves the original problem or if there might be other ways of solving the same problem. There are a number of software prototyping tools and apps (such as marvel app, proto.io) available for this purpose.
- Try to generalize the claims as much as possible, so as not to limit the claims to any one specific way of implementation or any one technology. The language of the claims should be broad enough to even cover any technologies developed in the future, however narrow enough to not cover any existing patents or solutions already in the market.
Conclusion
Generally speaking, patenting is a skill that can be enhanced mainly by practice. As far as the learning to draft a patent is concerned, the best way is to read multiple patents in the same domain and try to understand the idea being patented.
There are both good and bad sides of patenting, and the system is not quite perfect (some people might argue it kills innovation because the larger companies with their army of lawyers have an undue advantage), but it still gives an inventor a way of monetizing and getting credit for their original idea. This is why I would encourage anyone to determine first if their new idea is indeed patentable, and if so to consider patenting their idea.
