In the past, patent law was not frequently used to protect software related inventions. It was very difficult to obtain patent protection for software related inventions, and patent applications covering software related inventions were typically rejected as "unstatutory." Unstatutory inventions are those which fall within certain classes for which patent statute prohibits issuance of patents. Algorithms are included on the list of unstatutory inventions. In the past, software related inventions were rejected as unstatutory for attempting to patent an algorithm. Software related inventions also frequently received "printed matter" rejections. Merely arranging information on a piece of paper is not considered to be patentable unless the printed matter bears a new and non-obvious functional relationship to the substrate, and software code has been rejected in the past on these grounds. Various rejections were appealed to the Court of Appeals for the Federal Circuit, which has found many software related inventions to be statutory, and capable of patent protection. For example, claims including an analog to digital converter were found statutory in one case, and claims including a ROM look up table were found statutory in another case. However, the U.S. Patent and Trademark Office interpreted these decisions very narrowly, and continued to reject patent applications covering software related inventions. The Patent Office was most likely to allow a software related application if there was some novel hardware other than the computer itself. Thus, the Patent Office favored inventions relating to control processes, but not inventions involving pure software. Patent attorneys took steps such as disguising an invention as hardware, using block diagrams, to try to avoid such rejections.

Because of these difficulties, and controversy about whether software should be capable of patent protection, some companies relied in the past solely on copyright protection and licensing agreements to protect their software.

(1) If a claim is found to encompass any and every computer implementation of a process, the claim will be considered statutory only if the underlying process is statutory. A process falls within a statutory "safe harbor" if it requires physical acts to be performed outside the computer, where those acts involve the manipulation of tangible physical objects and result in the object having a different physical attribute or structure ("post-computer process activity"). Processes fall within another statutory "safe harbor" if they require the measurements of physical objects or activities to be transformed outside of the computer into computer data, where the data comprises signals corresponding to physical objects or activities external to the computer system, and where the process causes a physical transformation of the signals which are intangible representations of the physical objects or activities ("pre-computer process activity"). If a claim does not clearly fall into at least one of these safe harbors, it may still be statutory if it is limited by the language in the claim to a "practical application in the technological arts." Examples given in the guidelines for "practical applications in the technological arts" include the following:

• A computerized method of optimally controlling transfer, storage and retrieval of data between cache and hard disk storage devices such that the most frequently used data is readily available.
• A method of controlling parallel processors to accomplish multi-tasking of several computing tasks to maximize computing efficiency.
• A method of making a word processor by storing an executable word processing application program in a general purpose digital computer's memory, and executing the stored program to impart word processing functionality to the general purpose digital computer by changing the state of the computer's arithmetic logic unit when program instructions of the word processing program are executed.
• A digital filtering process for removing noise from a digital signal comprising the steps of calculating a mathematical algorithm to produce a correction signal and subtracting the correction signal from the digital signal to remove the noise.
  
  

(2) A claim limited to a specific machine or manufacture, which has a practical application in the technological arts (most do), is always statutory. An example of such a statutory invention given in the guidelines is one where the disclosure describes specific software, i.e., specific program code segments, that are to be employed to configure a general purpose microprocessor to create specific logic circuits.




In addition to these guidelines, recent decisions by the Court of Appeals for the Federal Circuit provide additional opportunities for protecting software related inventions. For example, in one case (In re Lowry), the patent claims were directed to a memory for storing data for access by an application program being executed on a data processing system, comprising a data structure stored in the memory, the data structure including information resident in a database used by the application and including various data objects. The Patent Office refused to give patentable weight to the claimed data structure, and analogized the data structure to printed matter, which cannot serve to distinguish the invention from the prior art in terms of patentability, unless the printed matter bears a new and non-obvious functional relationship to the substrate. The Court of Appeals for the Federal Circuit disagreed, and held that the Patent and Trademark Office may not disregard the data structure as being analogous to "printed matter." The printed matter cases have no relevance where the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer.

In another case (In re Beauregard), the claimed invention was an article of manufacturing comprising a computer usable medium having computer readable program code means thereon for causing a polygon on a graphics display to be filled, the computer readable program code means comprising various items. The Patent Office held that the claimed article was non-statutory on the ground that it was "printed matter." The Patent Office took the position that a floppy disk encoded with a computer program was similar to a piece of paper on which information is printed and that the information did not interact functionally with the substrate in a novel and non-obvious manner. The Commissioner of Patents reversed the position of the Patent Office and conceded that computer programs embodiment in a tangible medium can constitute patentable subject matter.

In view of these developments, it is clear that software patents are here to stay. There is no doubt that software can be protected by patent law. Patents provide strong protection in that they prevent against independent invention, and against reverse engineering. Copyright protection protects against copying, but "clean room" techniques can be used to circumvent copyright protection. Such a technique involves one team that decompiles software and prepares flowcharts or a description of how the software functions. A separate team, which is not provided access to the code, prepares independent code based on the flowcharts or description. Copyright protection also does not protect against independent creation. With regard to whether copyright should be relied on instead of patent protection, you should be aware that the courts are severely restricting the ability to use copyright law to prevent infringement. In addition to the fact that copyright protection does not prevent against independent invention, but requires copying, menu structures have been held to be not capable of copyright protection in a recent case between Lotus and Borland. On the other hand, a patent is not subject to a defense of independent development. Anyone making, using, or selling a patented computer program is an infringer even though they had no knowledge of the computer program. When asked to compare the difference between copyright and patent protection for his PC spreadsheet program, the inventor of Visi Calc was quoted to state "With a patent the only difference would have been several hundred million dollars."




Software patent applications are typically more complex than patent applications covering mechanical inventions, and are therefore more expensive to prepare. If desired, the actual computer code can be included in the application, or appended as a microfilm. The more information that is included, the more likely the application will be valid, but more trade secrets will be lost. If the source code will be generally available, and not kept as a trade secret, it may be advisable to include a microfilm of the code. Otherwise, source code is typically not disclosed in a patent application.

Once filed, the patent application is assigned to an Examiner in the Patent and Trademark Office. We normally expect to receive a communication from the Examiner within one year. Almost invariably, the Examiner believes it is in his or her duty to question the patentability of an invention. We must then analyze each Examiner's position and advise our clients concerning the required response. The number of issues raised by the Examiner will determine the fees involved in actually responding to the Office Action. Often, two to three such Office Actions and Responses are involved during prosecution of a patent application. If an Examiner is being particularly unreasonable, interviews, appeals or other steps are sometimes advisable. We provide our clients with estimates of all fees and expenses at each step. We do not proceed without specific authorization. The typical time period a U.S. patent application is pending from filing to issuance of a patent is one and a half to two and a half years.

Whether you decide to proceed with a patent application is a business decision you must make based on a variety of factors. Before proceeding with an actual patent application, you may wish to consider a patentability search to determine whether the cost of an actual patent application is merited.




While it is fairly easy to obtain software patents in the U.S., case law in other countries is still evolving. For example, it can still be difficult to obtain software patents in Europe, although some cases are indicating increased tolerance towards software patents. One of the most cost effective ways to protect software internationally is through trademark protection. It is difficult for pirates to sell illegally copied software without also using its name. The cost of obtaining trademark registrations around the world is much less expensive than obtaining patents around the world, and trademark rights are less expensive to enforce. It is much easier to prove that a trademark is being infringed than to prove that a patent or copyright is being infringed, because the issue is simple.

Note that copyright protection is possible even if a patent application is filed. Therefore, copyright notices should appear in screens and printouts. Copyright protection is created automatically when software is fixed in a tangible medium. There are additional benefits to registering a copyright. Namely, a registration is necessary to bring a suit, and it may be possible to obtain statutory damages and attorneys fees if a registration was obtained within a certain time period. If you decide to file an application to register the copyright in your software, you must choose from the options below.

You must first choose whether or not to include screens in the copyright application. Copyright in computer code will cover screens generated by the code even if printouts of the screens are not submitted to the Copyright Office. We typically recommend against filing the screens because it has not been conclusively decided that screens may be separably protected by copyright. The Copyright Office typically examines screens, if submitted, for copyrightability and may give an undesired opinion that a particular screen is not capable of copyright protection. A court may later defer to this opinion, and it is preferable not to have such an opinion from the Copyright Office.




If you plan to file a copyright application for a computer program containing trade secrets, there are various deposit possibilities from which you must choose:

1. file the first twenty five and last twenty five pages of source code with portions containing trade secrets blocked out;
   
   
2. file the first ten and last ten pages of source code alone, with no blocked out portions;
   
   
3. file the first twenty five and last twenty five pages of object code plus any ten or more consecutive pages of source code, with no blocked out portion; or
   
   
4. for programs fifty pages or less in length, file the entire source code with trade secret portions blocked out.

You typically want to include enough information to be able to prove copying, while giving away as little trade secret information as possible. It is difficult to say if any of the above options is preferable over another. The risk of supplying source code to the Copyright Office is that a skilled programmer may be able to figure out the program, and may even be able to code the software in a sufficiently different manner so as to avoid copyright infringement.

It is strongly recommended that you include some red herrings in the code to assist in proving wholesale copying. For example, include some code that does nothing other than an unnecessary loop, or code that can never be reached and processed by the computer.

An important issue regarding copyright law is that of ownership. Although not always practical, it is legally preferable that only employees write any code. Employees should be subject to employment agreements in which they agree to maintain in confidence any trade secrets or know how. If any independent consultants are used to write code, agreements should be put in place in which they agree to transfer all ownership in any copyrightable work they create, and in which they waive so called "moral rights" of integrity of their work and of attribution.




Note that icons, if sufficiently unique, may be capable of a trademark registration and/or a design patent.

If you wish, we can assist you in determining how best to protect software related inventions, given your budget. If a software patent is desired, we have experience in preparing patent applications for software related inventions and in successfully prosecuting them to allowance. We would be happy to provide you with estimates. Please call if you wish to discuss your particular situation. The legal fees for this call will be based on our hourly rates.


Conclusion
Software is valuable and must be appropriately protected. Patents provide the strongest form of intellectual property protection, and protect against reverse engineering and independent creation. New guidelines issued by the U.S. Patent and Trademark Office make it easier to obtain patents on software related inventions.

Copyright protection can exist in addition to patent protection. However, recent case law has eroded the value of copyright protection. Copyright registration can provide some important advantages (e.g., provisions for attorney's fees and statutory damages) at a cost of possible loss of trade secrets.

Trademark registrations provide a cost effective way to protect software worldwide.

Icons may be protected by design patents and/or trademark registrations.






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