Is software patentable?

The short answer is no, but yes. This post explains why and illuminates how software, apps and computer-related products can be protected by patents.

Asking and Answering the Right Question

Is software patentable?

When people ask “is software patentable?,” they are typically an inventor or developer of a product that runs on software, and they want to know if they can protect their invention. For example, it might be a smartphone app, a website, or a device or system that uses software to perform various functions. The real question is therefore whether software-related inventions can be patented. The answer to this question is YES. Unfortunately, the “how” of protecting these inventions is what often leads people to the wrong answer.

Patenting Software Without Patenting Software

An issued patent allows the owner to exclude others from making, using, selling or offering an invention covered by the “claims” of the patent.  These claims are analogous to the legal description of real estate. Just as a deed defines the bounds of land that is owned, patent claims define the bounds of intellectual property that is owned. Under the current state of patent law, patents cannot specifically lay claim to software. For example a patent claim that recites “a software product that performs functions X, Y, Z, etc.” would not be allowed.

However, a patent claim to “a computer configured to perform functions X, Y, Z, etc.” could be patentable. A patent claim to “a computer implemented method that includes the steps of X, Y, Z, etc.” could also be patentable. A patent claim to “a computer readable medium that configures a computer to perform functions X, Y, Z, etc.” could also be patentable.

Accordingly, while software itself is not literally patentable, software is effectively patentable by drafting a patent application in the right way. This illustrates one of the many reasons why working with a patent attorney is so important, especially for software-related inventions.

Don’t Get Bogged Down in the “How”

The takeaway here is that software-related inventions can be protected with patents by protecting a computer system that performs certain functions, a computer implemented method, and/or a non-transient memory that configures a computer to do things. However, don’t focus on these technical details when working with your patent attorney to protect a software-related invention. Instead, focus on the functionalities of the app, device or system that you want to protect and let your patent attorney handle the minutiae of patent law that dictates how this is done. Patent law is always in flux, and a good patent attorney will know how to protect software-related inventions as the law changes.



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“Is it safe to use LegalZoom to file a patent application?”

This post gives an overview of LegalZoom’s patent-related services and shows you why it’s NOT a great idea to use LegalZoom to file a patent application.

An Overview of LegalZoom Patent Services

LegalZoom logo: Is it safe to use LegalZoom to file a patent application?LegalZoom offers provisional and non-provisional utility patent applications, starting at $199 and $2,400 respectively, plus government filing fees. For the provisional application, LegalZoom says that you simply “answer a few questions and we’ll complete and file your Provisional Application with the USPTO.”  For the non-provisional application a “patent attorney or agent will prepare up to two drafts of your utility patent application (including up to 5 pages of specifications, 10 claims, abstract and information disclosure statement.)”

A full discussion of provisional vs. non-provisional applications is outside the scope of this post, but the basic gist is that provisional applications are temporary placeholders that expire at the end of one year, at which time, a non-provisional utility application must be filed.  Unlike, the provisional application, the non-provisional utility application goes through a substantive examination process and can mature into an issued patent. Applicants can start the patent process with a provisional patent application or can skip ahead and file the non-provisional application first. Both applications give “patent pending” status.

So What’s Wrong With The LegalZoom Service?

The problem with these LegalZoom patent services is that they lure inventors into believing that they can get solid patent protection for cheap. In fact, the sad reality is that patent applications drafted this way offer effectively no patent protection and have little chance of withstanding the examination process. Plus, the nature of the patent system makes it such that inventors won’t know this until it’s too late and their patent rights are irrevocably lost.

For example, for provisional patent applications, the USPTO will accept any document filed and give it a filing date and application number.  However, what LegalZoom fails to make clear is that you only truly get priority for inventions that are disclosed in adequate detail in the application and that a short questionnaire cannot possibly yield sufficient detail that actually gives suitable protection to an invention. Unfortunately, because they are not substantively examined by the USPTO, worthless provisional patent applications give inventors a false sense of security because they get the same filing receipt and “patent pending” status that a legitimate application would.

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The LegalZoom non-provisional utility patent application is similarly flawed. As with the provisional application, priority to an invention is based on adequate description of it, and the “up to 5 pages of specifications” promised by LegalZoom (which presumably includes drawings), is not sufficient to adequately describe a given invention aside from the most simple mechanical device. Unlike provisionals, which are not examined at all, non-provisional utility patent applications must comply with strict formatting requirements at filing and then must survive the scrutiny of substantive examination 1-3 years later.

Unfortunately, the specification and drawings are essentially set in stone at the time of filing and updating or adding new details to the application is not allowed after filing. Accordingly, once the application is filed and passes an initial review, it therefore takes 1-3 years before terminal defects in the application become apparent and it’s then impossible to add the important details that were left out at filing. In other words, a worthless non-provisional utility application can still conform with the basic filing requirements and receive a filing date and application number, which provides a false sense of security until it fails to issue as a patent 1-3 years later.

Sounds Bad, But I’ll Either Sell My Company or Have Investors On Board Before These Problems Are Discovered

Unfortunately, savvy investors and business collaborators and can easily spot bad patent applications, and the due-diligence process that establishes a relationship with such parties involves a thorough review of any patent assets. In fact, in any deal where I’m performing due diligence on a company’s patent assets, the first thing I look for is a sign that patent applications were drafted by the inventors themselves or by a cut-rate service. Having questionable patent assets almost always preempts a relationship, or at the very least, justifies a deep discount in any resulting deal.

So, if LegalZoom is No Good, How Should I Get My Patent Applications Drafted and Filed?

The best thing that inventors can do is to find a trusted patent attorney that can craft a custom patent strategy that maximizes patent protection within a reasonable budget based on the unique business goals associated with a given invention or product.

LegalZoomPatentValueProfilePatent value compared to patent cost is generally an S-curve as illustrated on the left. Value and protection remains limited at low cost until a threshold is reached where any added cost gives large gains.  On the other hand at high cost, value and protection does increase, but at a slower and decreasing rate.

LegalZoom is on the low end of the spectrum, where you get little value at a low cost. Accordingly, cheap one-size-fits all patent services seem to save money, but end up being costly because they leave inventions under-protected or allow patent rights to be unknowingly forfeited.

The key is to find a trusted patent attorney that can collaboratively identify the cost range that provides the most value for the money based on the invention and specific business goals. Yes, not everyone can ultimately afford a patent application within this ideal range, but everyone should be aware of the consequences of under-spending on patent protection.

You might also like:

Are Ideas Patentable? Is Your Idea Patentable?

Is Software Patentable?

Top Three Patent Myths

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Sucking a toilet can save your life!

New PictureWhat is going on here? A guy with a tube, sucking on a toilet?  Yes, that’s exactly what’s going on.  Stick with me and I’ll explain why you might actually want to do this yourself given the right situation.

Why would I ever want to suck out of a toilet?
Imagine this: you’re staying in an upper floor of a high-rise hotel and a fire breaks out.  Unfortunately, you are trapped in your room because of smoke and fire outside, and as in most hotels, the windows do not open.  Smoke begins to fill the room, and you are quickly running out of air to breath.  What do you do?

Plumbing that leads to sewer lines, including toilets, have a “gas trap” of standing water that prevents sewer gasses from leaking into a room. In the case of a smoke filled room, this works the opposite direction – the gas trap stops smoke from entering the sewer lines, which still have breathable air.

Gross. So I would be sucking on sewer gas?
Yes, sewer gas is extremely nasty as you can probably imagine, but when faced with imminent death due to smoke inhalation, beggars can’t be choosers.  Luckily, the invention shown above in William Holmes’ U.S. patent 4,320,756 that issued in 1982 provides a solution to this.  In addition to providing a tube that can snake through the gas trap and into the air in the sewer line, it also has a charcoal filter that makes heinous sewer gas taste like a warm spring day.

I initially came across this patent with the intention of including it in my series of “crazy patents” posts, but despite the hilarious drawings, the invention actually serves a legitimate purpose.  That being said, there is a reason why this was never a standard-issue appliance in all hotel rooms and why travelers did not pack one of these as an essential item on all trips. A bit crazy, but a bit cool as well.



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Top 3 Traits of Successful Entrepreneurs

As a patent attorney, my practice focuses on tech startups and I regularly work with both successful and unsuccessful entrepreneurs.  In my experience, the three main skills, traits, talents, or mindsets that are common to successful entrepreneurs are: (1) a strong understanding of the market; (2) an ability to sell the product and business; and (3) an ability to move past adversity.

(1) Strong Understanding of The Market

Unfortunately, it’s far too common for inventors to come up with new products without considering whether there would even be a market for them.  They concoct a new idea and then face an uphill battle of convincing customers of its value. This is typically because they are unaware of the needs and wants of the market or because they are unaware of existing solutions.

In contrast, successful entrepreneurs tend to already know the market because they work in the field or are otherwise immersed in it.  For entrepreneurs that are new to a market, they recognize their weakness and leverage insiders in the field and work to quickly learn the culture and landscape of the field.  Successful inventors work backwards by first identifying the needs and wants of the market and then developing a product that fills the gap.

(2) Ability to Sell the Product and Business

I deal with many inventors who have amazing ideas, but are completely unable to sell their product and business to investors, partners and customers.  Their skill is in the technical aspects of the invention, but they are unable to engage others to make it a success.  On the other hand, I have other clients with mediocre, and even terrible ideas, that do extremely well because they know how to captivate their target audience.  They know how to present their business in such a way that investors and potential business partners can’t resist, and are able to connect with and invigorate potential customers.  In short, a great idea is not enough without someone who can effectively sell it to the right people.

(3) Ability to Move Past Adversity

Being an entrepreneur is rough, and I have the utmost respect for people who take a shot at their own business and even more respect for those who succeed.  For my clients that end up being successful, a core skill or trait is being able to fight through the inevitable roadblocks that they face.  Moreover, it seems like such adversities actually spawn important breakthroughs in a business instead of slowing it down.  The people who end up making it have an unwavering faith that solutions are out there and simply fight to find them.


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No time to pet your dog? You need the auto-petter!

Figs. 1 and 2 of U.S. Patent 4,872,422

If you have a busy life, you might not have time to give your dog the attention that she deserves. Instead of allowing your dog to be sad and neglected, why not get yourself a dog auto-petter as shown in U.S. Patent 4,872,422 that was issued to Rita Della Vecchia in 1989.

But what if my dog is really big or extremely small?
Luckily, the auto-petter arm can be raised and lowered on its stand so that it can be custom-fit to the height of your precious pet.

So how does the auto-petter know when to pet my dog?
Well, some versions of the auto-petter have an “electronic eye” that sees when the dog is in the right position under the arm, and then begins to vigorously pet and scratch the dog.

Do dogs enjoy the auto-petter?
Of course they do!  What dog would not love a disembodied hand that would come to life and touch the dog when the dog came near it.  Not convinced? The patent drawings show an example of a satisfied customer:

Picture of a dog loving the auto-petter.



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Patent on Exercising Cat With A Laser

Patent on Exercising Cat With A Laser
Fig. 1 of U.S. patent 5,443,036

Be careful the next time you are playing with your cat – you might be infringing the “method of inducing aerobic exercise in an unrestrained cat” protected by U.S. patent 5,443,036.

The patented method comprises two steps:

“(a) directing an intense coherent beam of invisible light produced by a hand-held laser apparatus to produce a bright highly-focused pattern of light at the intersection of the beam and an opaque surface, said pattern being of visual interest to a cat; and

(b) selectively redirecting said beam out of the cat’s immediate reach to induce said cat to run and chase said beam and pattern of light around an exercise area.”

In other words, the patent essentially covers shining a laser light near a cat and then moving the light so that the cat chases it.



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Video Amazing robots from Boston Dynamics

For those of you who love robots, this is as good as it gets. These four-legged robots walk like a horse and can easily navigate hills, stairs and rough terrain.  What makes these robots special is that they are capable of navigating to destinations on their own autonomously or by following a human companion – no remote control or pre-programming required.  One of the most impressive features is being able to recover from falls and even a surprise kick (check out 0:21 and 0:29).

This is the latest four-legged robot from Boston Dynamics (who was recently acquired by Google), but they also have two-legged and wheeled robots that are just as impressive.  Check out some of the other videos that come up when this one ends or check out the Boston Dynamics channel on YouTube. Enjoy!


Wrist Watch for Dogs (#CrazyPatents)

Dog watchLet’s face it – dogs are terrible at keeping track of time.  While it’s true that dogs staunchly believe in being fashionably late, typically the issue is simply that dogs don’t have access to clocks while out and about.

Unfortunately, having access to human clocks is not enough.  As we all know, dogs live in “dog years,” which means that dogs cannot fathom human-time, plus their poor math skills makes it impossible for them to convert to dog-time.  In other words, human clocks are completely worthless to dogs.

Luckily there is a solution to this age-old conundrum.  As described in U.S. Patent 5,023,850, wrist watches can be made for dogs that automatically keep time in dog years.  Sheer genius!

As shown in Fig. 1 of the patent, (reproduced on the left), dogs love to chill out and check the watch that is wrapped around their dog-arm.


FIG. 1 shows a watch according the present invention in the form of a wristwatch worn by a typical dog.



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Top Three Patent Myths

Top three patent myths1) You need a prototype before filing a patent application

Untrue!  The only requirement is that the invention is describable in sufficient detail such that an average person in the field would be able to make and use it. Also, the requirement is not that the inventor be able to sufficiently describe the invention, and in many cases, an idea can be patentable even if the inventor would not know how to implement it.  For example, if the inventor can describe an idea to a patent attorney such that the patent attorney is able to then add sufficient detail, then the idea might be patentable.

2) A patentability search is required before filing a patent application

Wrong! There is no requirement to do a patent or prior art search before filing a patent application – it’s optional.  For some inventions, a patentability search would be highly recommended, but for others it’s a complete waste of time and money.

3) It’s okay to file a patent application without a patent attorney

Sorry, it’s not a good idea. Sophisticated technology companies always work with patent attorneys during the drafting, filing and the examination of patent applications at the Patent Office.  These companies know that all patents are not created equal and that navigating the patent process without an attorney typically leads to a less-valuable and unenforceable patent, or results in a patent never issuing at all. Working with a patent attorney is the only option for any serious inventor or company. Luckily, contrary to popular belief, working with an attorney is possible on nearly any budget.



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Don’t have a baby the old fashioned way. Spin it out! (#CrazyPatents)

Fig. 2 of U.S. patent 3,216,423.

Hey, ladies! You’ve been having babies the wrong way since the beginning of time.  Luckily, there is some hope for you.  Back in 1965, George and Charlotte Blonsky invented a new way of childbirth that was the subject of U.S. patent 3,216,423, and here is how it works.

The Blonsky Baby-Spinner Birthing Method:
1) You get strapped down to a huge table while naked;
2) The table spins rapidly in a large circle; and
3) The spinning force gently rips a baby out of you.

What about doctors? How are they involved?
Unfortunately, doctors, medical staff and your partner cannot be near you because the spinning table would smash into them – they must stay back a safe distance until the baby finally shoots out.  But don’t worry, they can stand around the machine and yell in support as you spin by.  It’s totally fine and having people at your bedside during childbirth is overrated anyway.

This sounds great, but what happens to the baby?  Where does it go?
It’s true, the baby does come shooting out at high velocity.  In early prototypes, doctors were only able catch the flying baby some of the time, so we installed a net to catch the baby instead.  Trust us, it works great!  (See Figure 3 of the patent below):

Fig. 3 of U.S. patent 3,216,423 showing the baby net.



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