IP Essentials: Q&A Series

Q How much detail is needed to patent a software invention? A A patent application needs to include enough information that somebody of ordinary skill in the relevant technical field would be able to implement the invention. For software inventions, it is not necessary to include source code. However, the description should include any key functional modules, along with algorithms for each module that go beyond merely inputs and outputs. The patent application needs to describe, in at least some detail, how each module produces the outputs from the inputs. There have been cases where failure to describe the algorithms inside of software modules have resulted in patents being deemed unenforceable. In general, it is best to provide your patent practitioner with as much detail as possible—including whitepapers, flowcharts, architectural diagrams, etc.—so they can incorporate the necessary level of detail in the patent application. Q My software is already live. Can I still patent it? A Going live with software counts as a public disclosure for patentability purposes. In the United States, there is a one- year grace period from the date of the first public disclosure until you are barred from obtaining a patent on what was disclosed. During that time, there is a risk that somebody

could beat you to filing a patent application for the same technology, so best practice generally is to file a patent application before going live—or, if already live, as soon as possible within the one-year grace period. However, it may no longer be possible to patent the software in countries where any public disclosure whatsoever precludes filing a patent application. Q Does my software need to be implemented to file a patent application? A No. A software-based invention does not need to be implemented

"In general, it is best to provide your patent prac-

titioner with as much detail as

possible—includ- ing whitepapers, flowcharts, archi- tectural diagrams, etc.—so they can incorporate the necessary level of detail in the pat- ent application."

to file a patent application. In fact, it is often better to file a patent application well before

the software is implemented. Testing activities, including minimum viable product (MVP) and beta testing, could result in inadvertent public disclosures that jeopardize patent rights. You may file a patent application even if you are not sure whether you will ever actually implement the invention.




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