Software Executive Magazine

February/March 2018

Software Executive magazine helps software executives grow their businesses by showcasing the business best practices of our readers, executives from established and innovative software companies.

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Should You Get A Software Patent? Software companies need to weigh whether or not it's a smart investment to spend up to $50,000, plus the potential cost of litigation, for a patent that might not be enforceable in court. J O S E P H S A L T I E L Partner, Dinsmore & Shohl LLP fluctuate, but it is not inconceivable to pay up to $25,000 for filing a patent application, which includes attorney fees, prior art search fees, and USPTO fees. A developer could also easily spend up to another $25,000 for pros- ecuting the patent before the USPTO and additional USPTO fees such as maintenance fees. Is it worth invest- ing up to $50,000, not to mention the cost for any litiga- tion, for a patent that might not be enforceable in court? That answer will vary, but it will likely depend on the specific software at issue. Using software patents to block others from using software to perform typical or known functions will likely result in an unpatentable invention. For example, while the courts have not per se excluded business method patents, few have sur- vived a patentability challenge in the current environ- ment. Likewise, software patents that merely exploit the inherent functionality of hardware are likely not worth patenting. For example, an app that uses a mo- bile phone's camera flash as a flashlight (or strobe light) would likely not be patentable even if no one had previ- ously used a phone's flash that way, because that func- tion, i.e., transmitting light, is inherent with the phone's flash hardware capability. Also, software patents that are purely function and would pre-empt all known (and unknown) ways of performing that function are not likely to be patentable. Lastly, developers should con- sider that merely being the first one to write software to perform a particular task does not necessarily make that concept patentable. Instead of trying to corner a market, software develop- ers considering patent protection should focus on their own software. If the software provides a novel solution oftware has transformed our society, and like with any innovation, software compa- nies have been zealous trying to protect their IP by seeking patents. Since 2012, the Unit- ed States Patent and Trademark Office (USPTO) issued an average of 300,000 patents per year, and a majority of the issued patents are software-related. And while tech giants like Google, Microsoft, and Apple are among the companies with the most issued patents each year, many smaller software companies have also sought patent protection. The current U.S. patent laws, however, were passed in 1952, well before the onslaught of software into our dai- ly lives. Thus, courts have been forced to fit software as best they can into the pre-existing regulatory scheme, resulting in a mishmash of rules applied inconsistently. A perfect storm of technical innovations and an expan- sive view of software patents in the 1990s eventually led to a dramatic increase in software patent applications. The number of annual patent applications being filed grew from approximately 200,000 in 1994 to almost 630,000 in 2015, with a significant amount of them in- volving software. However, until Congress provides a patent regulatory scheme that specifically addresses software, developers are left to decide if obtaining pat- ents is the right move. FACTORS TO CONSIDER WHEN DECIDING TO SEEK A SOFTWARE PATENT With the current antisoftware patent climate in the courts, companies might question whether software patents are worth the investment. Software patent costs S OPINIONS & CHALLENGES Index By J. Saltiel SHOULD YOU GET A SOFTWARE PATENT? SOFTWAREEXECUTIVEMAG.COM FEBRUARY/MARCH 2018 12

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