20 Things You Need To Know About Software Patents

On July 31, 1790, Samuel Hopkins was issued the first patent for a process of making potash, an ingredient used in fertilizer. President George Washington signed the patent.

Since that day more than 6 million patents have been issued.

I saw some potash/fertilizer the other day I need to tell you about. I don’t watch much TV, but I do enjoy the show Shark Tank. For me, it looks like a lot of fun to be on the panel. I have tremendous respect for anyone who makes enough of a success of him or her self to be in a position to invest. That’s what every entrepreneur works towards… that freedom and those choices.

That said, I saw some advice from “Shark” investor Barbara Corcoran the other day which made me cringe and I wanted to put this out there as an addendum to her advice. You see, Barbara is not in the world of software. She deals with real estate and products. In an interview with inc.com she said the following on the biggest mistakes small businesses make:

“Pissing away money on patents and PR. The right dance steps are:

1) Make the product

2) Get some sales

3) Make the big guys envy you, and only then get a patent.”

At the end of the article, I have linked to that quote (mostly so you don’t leave)

I cringed when I got to #3 because this advice could really put some technology entrepreneurs in a very bad place. #1 and #2 are smart!

Here is what I have learned going through the process of patenting multiple pieces of technology:

1) You MUST get a patent attorney. No, you cannot do this yourself. No, your wife’s friend who is an attorney cannot figure it out. Patent attorneys are highly specialized. Save up the money and find a patent attorney.

2) Not any patent attorney will do. Most of them are as worthless as the day is long when it comes to technology or software patents, but they will take your money anyway. Find a patent attorney who specializes in technology/software. If you need a recommendation, contact me.

3) Patent attorneys are Federally licensed. If you are in Florida, you don’t have to see a Florida attorney (which is unique).

4) Be prepared to write! If you think it’s as easy as bringing your idea to an attorney and having him or her write everything up, think again. No fewer than 10 pages of technical documentation, drawings and images were submitted for any of the patents I applied for. If you bring your attorney garbage, he will either produce a subpar patent or charge you a fortune… maybe both.

5) Use the patent attorney’s artists. The drawings may seem simplistic and they cost an extra $100 or so per image, but that’s another thing you should not try to do yourself unless you like rejection and wasted time.

6) Write your patent as broadly as you can. Your patent can and will get rejected and that’s OK. Go for more than you need… go big! You can scale the patent back and hone in on your final patentable piece based on feedback from the United States Patent and Trademark Office (USPTO). You can’t add to elements later if they weren’t there when you started. Want to increase your odds of a patent? Go for a LOT and adjust as you get feedback.

7) You MUST have your patent idea SUBMITTED BEFORE you go to market. This is where Barbara’s advice is very dangerous. In the world of software, you cannot patent something that is being used by the public. Once it’s out, it’s “public domain” unless you have submitted your provisional patent.

8) Patent laws change daily based on court cases. Many people (including Mark Cuban) think the ability to patent technology is harmful to the evolution of technology. It is entirely possible you get rejected.

9) You can get a provisional patent, or a non provisional patent. The definition of the provisional patent is the following: Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year.

In short, a non-provisional is a “real patent.”

10) Getting a provisional patent in place is less expensive that a non-provisional patent. It includes a patent search and assures your place in line. You can launch your product when you have your date for your provisional patent.

11) A non-provisional patent can take up to 5 years to get approved or rejected.

12) Most software patents are rejected because they are not mechanical or they don’t have a proprietary algorithm.

13) It is absolutely possible you could be issued a patent and then lose in court if someone infringes on your patent. Having a patent and being able to enforce that patent are two completely separate things.

14) When you submit your patent, you are teaching the world how to do what it is you “invented,” accept that this has drawbacks as well.

15) To apply for a US patent can cost upwards to $20,000.

Patent Infringement – Considerations in Determining If There Is Infringement

Patent infringement is a statutory tort and the actions that make up the tort are set out in section 60 of the Patents Act 1977.

An infringement action can be brought by either the patent proprietor or alternatively an exclusive licensee of the patent.

To determine whether there has been infringement, it is necessary to consider:

1. The scope of the invention which is protected by the patent (or patent application).

2. Whether the activities of the potential infringer in relation to the invention fall within sections 60(1) or (2) of the PA 1977.

3. Whether any statutory exceptions or other defences are available.

There are two types of infringement:

1. Direct infringement, meaning acts done directly in relation to patented products or processes (section 60(1), PA 1977). It covers activities in the UK relating to: (I) Patented products; (ii) Use of patented processes; (iii) Offering patented processes for use; and (iv) Products obtained directly through patented processes.

Where the patented invention is a product, a person infringes the patent (Section 60(1)(a), PA 1977) where they either: (I) Make the product; (ii) Dispose of the product; (iii) Offer to dispose of the product; (iv) Use the product; (v) Import the product; or (vi) Keep the product (whether for disposal or otherwise).

2. Indirect Infringement, meaning acts done indirectly in relation to patented products or processes. A person indirectly infringes a patent (Section 60(2), PA 1977) where all of the following apply:

a. He supplies or offers to supply in the UK a person with any of the means relating to an essential element of the patented invention for putting the invention into effect.

b. Either he knows or it must be obvious to a reasonable person in the circumstances that the means are suitable for putting, and are intended to put, the invention into effect in the UK.

c. The person supplied or to whom the offer is made is not a licensee or another person entitled to work the invention.

Section 60(5) of the PA 1977 sets out a number of exceptions to infringement under sections 60(1) and (2) of the PA 1977.

In addition to the exceptions to infringement it is also possible to defend a patent infringement claim by challenging the validity of the patent/ patent registration on the grounds that:

1. The invention does not satisfy the statutory criteria applicable for patent registration;

2. There is prior art and the invention was not novel at the time of registration and therefore should not have been granted in the first place.

Alternatively it is also possible to defend a patent infringement claim by undertaking a technical analysis of the patent specification of the patent and proving that your product falls outside the ambit of the patent specification.

General Rules for Patent Drawing

Creating a drawing for a patent is very much different from the one we did in our school days. Unlike the drawing in school, here, we have certain rules and we need to follow these rules religiously, failing which can cost a rejection in the patent application. No matter whether the drawing is a utility patent drawing or a design patent drawing we need to follow these golden rules put forth by patent offices like USPTO.

This is an article that will highlight some of these golden rules which a draft-person should follow while creating a patent illustration for an invention.

Rules for Patent Drawing

Showing features clearly: No matter whether you are showing a device, process or a design putting every feature of the invention in paper and that too accurately is important. Patent illustrator needs to document every feature of the invention accurately.

All we can say that we need to make sure that the patent examiner fully understands the feature of the item without putting stress on their eyebrows. Failure to include all the details may lead to rejection of the patent.

For example if you have a drawing of a mobile phone that has many features we need to show each feature of the mobile phone in such a way that anyone going through it can have a clear understanding of the invention.

Neatness: Even if, you present features of your invention accurately but the drawing is having some strike-throughs, over writings and alterations you risk rejection. Though it is not documented anywhere that your patent illustration should be neat and clean still patent office like USPTO want you to present a neat and error-free drawing that is readable.

Legibility: Legibility is the ability to distinguish various letters and is another criterion a professional draft person needs to follow where each text, word and image should not overlap its adjacent element. Failing to make optimum legibility could lead to rejection of your application.

Readability: Readability is another criterion that is not documented anywhere but we need to follow it during this whole process. Spacing within words, between words and between lines are such that the resulting text is again visually readable.

Visually Appealing: Not only you need to have a legible drawing but it should also be visually appealing where your drawing sheet is devoid of folds, holes and creases.

Use Metric System: Any dimension and sizing information presented in a patent disclosure will be in metric inches preferably centimeters in case of small devices we can use millimeters. Though USPTO doesn’t forbid using English Engineering Units still they prefer metric system and thus we need to follow this rule as well.

Sheet Size: Sheet size is another important criterion that we need to follow in a patent drawing. Patent office like USPTO is very specific on sheet size and allows only two kinds of sheet size a) 21 cm x 29.7 cm which is also called as A4 size and b) 21.6 cm x 27.9 cm which American people generally use.

Putting it all together we can say that creating an illustration for invention is a science as well as an art that requires adequate knowledge of regulatory norms as well as an artistic approach and thus you can do justice with your invention only if you are an experienced draft-person.