
A question that I often get asked by clients is: how much must we disclose in a patent application claiming software? Yes, I’m going to shed some light on that, but first …
An up-front disclaimer: There are many complex and evolving rules and law pertaining to the topic of claiming software in a patent, and the right answers are often situation-specific, require analysis, and would constitute legal advice.
Here on this blog, my general comments are not legal advice and shouldn’t be relied on by anyone as legal advice. Rather, I am merely offering a few general comments to help others improve their basic and generic understanding and prompt others’ further academic study.
Now, with that disclaimer in mind, let’s dive into the topic.
Many clients do not want to disclose their confidential source code in the public record of an issued patent application, and so they do not wish to provide it to the US Patent & Trademark Office (USPTO) in a patent application filing or subsequently during prosecution to get that patent application allowed.
But 35 USC 112(a) requires sufficient written description in the patent application to enable one of ordinary skill in the art to write code that would satisfy the requirements of the patent claims. Hence, you’re going to have to disclose something about the software that you claim, but how much?
Since software is usually claimed in terms of its function rather than the coding specifics that were used to achieve that function, such claims are often interpreted accordingly by courts – that is, such claims are often interpreted under 35 USC 112(f) as having a scope defined by function rather than by a specific structure or steps.
35 USC 112(f) requires the patent application to disclose an example “structure” corresponding to the claimed function. In the case of software, such a requirement to disclose an example structure has been translated by the courts to instead be a requirement to disclose an example algorithm. See, e.g., Net Money v. Verisign, 545 F.3d 1359, 1367 (Fed. Cir. 2008).
The algorithm disclosed in your patent application must be sufficiently precise to support the entire function claimed, for example, using flow charts and a descriptive narrative. See, e.g., Blackboard v. Desire2Learn, 574 F.3d 1371, 1385 (Fed. Cir. 2009).
Ultimately, your patent application must include a sufficient written description (and disclosure of algorithms) to enable a coder of ordinary skill to satisfy the full scope of the software functions that you claim. The broader the scope of your claims, the more you may need to disclose.
Or Plan B: If everything about your source code must remain confidential, and if the algorithms can’t be reverse-engineered from the executable code or product function, then you might want to forego seeking a patent and instead rely on trade secret protection … but that’s a topic for another day.
Dr. Harrison represents clients in intellectual property legal matters, focusing on patent preparation, prosecution, licensing, post-grant proceedings such as inter-partes review (IPR), pre-litigation, opinions, and litigation.
Dr. Harrison is a registered patent attorney out of the firm’s Newport Beach office in Orange County, California located at:
2901 West Coast Hwy
Suite 200 Newport Beach, CA 92663
Leave a Reply