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.
16) Once you have your US patent issued, you have 1 year of protection/time to file for any individual countries you wish to be protected in. The "Patent Cooperation Treaty" has 148 countries, which can be viewed here http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=6
17) Each country you apply for a patent in will have its own filing fee. Nothing is free in the world of IP.
18) If you are lucky enough to be granted a patent, that patent is granted for a period of 20 years... keeping in mind "granted" does not mean "protected."
19) The big companies (Apple/Google) have departments which do nothing but file patents all year long. As always, the little guy is at a distinct disadvantage. Barbara is right that getting on the bigger companies radar may be a good thing but not in every instance. Big companies squash little companies all the time like it's a sport.
20) You can opt to have your patent published or unpublished in the patent journal distributed worldwide. There are pros (exposure) to being published, and cons (maybe being ripped off?) by choosing to publish. That's a choice you have to make.
So there you have it... what my experience with software patents has taught me. Barbara was not talking technology when she was quoted about patents, so be careful whom you listen to on this subject... it could cost you big if your idea is good enough.

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.

How Can You Protect Your Mobile App Idea?

If you have an exciting idea for a new mobile app, but are new to the world of mobile app development, you may make the common mistake of thinking least about the thing you should be most concerned about-protecting your idea. The instant your brilliant mobile app idea comes to you is the time for you to start protecting it. Here are some tips, gleaned from our years of experience working with startups, that you should consider:
1. Always use a Non-Disclosure Agreement (NDA)
A non-disclosure agreement (NDA) is a standard document that you can use to protect your app idea. Before you discuss your app idea with anyone-even in vague terms-you should get a signed NDA from them. This document will make the signers liable for damages if they show your idea to anyone. You can easily get NDA's from your attorney or from online legal services. Make certain that the people who sign them use their formal name and that the form includes exact contact information. NDA is a very important document you want to use to secure your app idea.
2. Disclose Information Selectively
You don't want to give a complete description of your app idea, especially in the first stages of developing it. For example, if you want to discuss your idea with an app developer to get an estimate, you don't have to show your idea in its entirety. You can hide some of your key features and get the estimates on standard features. Once you build some trust in the relationship, you can show more information.
3. Know More About the Recipient
Before you show your information to anyone,, you want to research them and find out their history, authenticity and credentials. If you are disclosing your idea to an app development company, make sure it is one that is well-established, has been in the market for a long time and has delivered for other startups. Reputable mobile app development companies make it their business to keep your idea safe. However, if you are talking to a freelancer who does not have any established history, you should take more precautions. If you are talking to a professional investor, Venture Capitalist, or angel investor, who has a history in app investment, you can consider them more reliable than someone who had no public image and record for earlier investment. Nonetheless,get a signed NDA prior to any discussion about your app idea.
4. Publish Your MVP App Sooner Rather than Later
You should publish your Minimum Viable Product (MVP) app as soon as possible. Once you publish your app, and it is publicly available, then your idea is safe under copyright law, as the first to publish it. Published apps are safe the same way in copyright law as published books are safe. The sooner you publish your app, the better your protection will be. Also, you will have first mover advantage in the market.
5. Create Your Design and File for Trademark
Before you develop your mobile app, which can take a long time, you can first create the design of your app. Design work typically does not take more than 5-6 weeks. Once done, you can include your design, logo and requirements in a trademark application. This will give you some protection. It is not as strong as a patent, but still you can use it in court if someone tries to copy your great idea.
6. File for a Provisional Patent if Needed
Filing for a patent is not easy. It is a very time- and money-consuming process. If you think your idea is unique and you want to patent it, then you can start with a provisional patent. Filing a provisional patent is relatively easier, as you can do it yourself without a lawyer. You can go to the USPTO website and do the entire process online. Your idea will then be protected for one year. During that one year, you will get enough comments on your idea to decide if it really is a great one and should have full patent protection. At that point, you'll want to get a lawyer's help to file for a patent.

Ready With Your IP Application Filing - Consider These Three Parameters

While doing research and development, we often found some creative ideas, processes, and concepts that don't exist. As an inventor, you hold the right to enjoy all the benefits of what you have invented and obtaining a patent can provide you the legal protection for that. Since the US patent law changed to first-to-file system from first-to-invent in 2013, so you need to be very quick in IP application filing.
The patenting process is quite complex and time-consuming, and includes various phases like IP application filing, drafting, drawing, office actions, and management.
Before you hire a patent agent to prepare the required documents for the process, you should do homework; what are the key features of your invention, how to monetize it, market research to analyze customers' needs, competitors' activities, etc.
Here are the important three parameters you should work on when filing an IP application:
1. Prior art search:
A general rule of obtaining patent is your invention should be unique and novel. So, it is better to check patentability of your invention before/during the patent application filing process rather than getting rejection from the intellectual property office later on. You can search for the prior arts in the country/region you want to get IP protection, and find out if its features meet the required IP uniqueness standards.
2. Market Mapping and Landscape Analysis:
Competition is one of the main barriers to success. There might be companies already practicing in the areas your invention belongs to, and you should do complete research about them. Market mapping and landscape analysis can help you to identify top players, current and upcoming product launches, and recent business deals in the target markets of your invention. You can get the information by industry type, revenue, total sales, and other parameters.
"Why market research is necessary at all" is the question you might have as an inventor. Well, according to an article published in HubSpot, Firms that regularly research their client markets (at least quarterly) grow more than ten times faster than firms that don't conduct research. However, market analysis not only promotes business growth, but, accelerate profits as well.
According to Hinge's report on effects of research on growth and profitability, firms that conducted frequent market research realized 19.9% profitability, whereas firms that did not conduct research reported only 11% profitability.
According to CBInsights "Fail to Meet Market Need" is the No. 1 reason for failure of start-ups, noted in 42% of cases.
3. Technology Landscape:
As your invention is to be brought up in the market one day, you should analyze the high demanding areas, latest and upcoming trends. Spend extra time in knowing if your patent can meet customers' requirements and adapt the changing external environment.
You might remember The Eastman Kodak Company, a leading photographic films and cameras seller, which failed and bankrupt in 2012. The reason for failure was the company's inability to diversify its product lines according to the new digital revolution.
Conclusion
Thus, studying market and technology trends is very important before/during the IP application filing process. It helps you know target markets and audience well, get market-sound claims, develop exclusive patent monetization strategies, and increase your returns on investment.