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Intellectual Property Protection Options for Software

February 15, 2016
Post by Blog Staff

In a previous blog post, I discussed some of the recent updates issued by the United States Patent and Trademark Office regarding patent eligible subject matter and software patents. As anyone who deals with software patents is aware, there is a lot of uncertainty as to whether software is patent eligible subject matter. While the Supreme Court has not unequivocally pronounced software to be ineligible subject matter for patenting, its recent decision in Alice Corp. v. CLS Bank Int'l. has not made the patent eligibility status of software patents any clearer.

Many software companies are forging ahead to try to get any patent protection they can in the hopes that the courts will clear up the issue in their favor. Meanwhile, other smaller companies are shying away from the hefty price tags that patents come with due to the risk that their investment may be for naught.

So, if you are developing software and want to protect your intellectual property rights, what are your options? How should you proceed? There are a myriad of choices, all with their own set of pros and cons. All four types of intellectual property protection are applicable to software: patents, copyrights, trademarks, and trade secrets. Which types of protection are best for your company depends on your goals and how much you want to invest in your intellectual property rights.

Copyright

Copyrights are the easiest type of protection to obtain for your software. To obtain a copyright, you simply need to create an original work of authorship. There is no need to apply or register for protection or pay any fees. A copyright lasts for the span of the author's life plus 50-100 years. The copyright protects source and object code, but ideas, algorithms, methods, and concepts expressed in the code cannot be protected by a copyright. Copyright protection essentially gives the owner exclusive rights to copy and distribute the software. The protection is relatively limited though, as others may reproduce the idea embodied in the software, but use different code.

Because copyright protection is essentially automatic, you will have protection as soon as your software code is written. However, copyrights should not be your only source of intellectual property coverage. A patent or trade secret will provide more robust protection for your intellectual property on top of your copyright.

Patent

Patents are the classic form of protection for intellectual property in technology. A patent gives the owner the right to make, use, and sell their invention for twenty years. The trade-off is that the technology must be disclosed to the public in enough detail that a person having skill can reproduce the technology. This form of protection is more robust than copyright because it covers the ideas embodied in the software. This covers use interfaces, methods, algorithms, and other functions of software. Therefore, if another entity comes up with the same idea, but with a different code, that entity infringes your patent.

To obtain a patent, there is a (usually) lengthy and expensive application and prosecution process that occurs with the United State Patent and Trademark Office. Generally a patent attorney is enlisted to assist with this process, incurring additional fees. Despite the hefty up-front investment, patents can be very useful defensive tools against competitors.

If you decide to go forward with a utility patent, you can expect a lot of push back from the patent office during prosecution. Work with a patent attorney who is experienced in handling software patent matters, so that you have the best counsel to guide you forward through that process. Many patent applications get stuck with § 101 rejections that stem from the decision in Alice. Such rejections are difficult to overcome as examiners are hesitant to allow patents that may be overturned later in appeals processes or litigation. Therefore, many practitioners are opting to appeal such cases to the PTAB to get a second opinion. The hope is that the PTAB will start issuing enough decision that the examiners will have more material to rely on in making their determinations to allow software patents to issue.

Trade Secret

A trade secret can protect any formula, practice, process, design, instrument, pattern, commercial method, or compilation of information that has economic value, as long as it is kept confidential. This is a useful tool for businesses to gain a competitive edge over its competitors. The owners of such information must take reasonable efforts to keep that information secret, but as long as they do so, the rights may extend indefinitely. This is in contrast with patents, which require that you disclose your invention in exchange for twenty years of protection.

Trade secrets protect your invention from others who acquire the information by improper means or from someone who has disclosed the secret without the owner's permission. However, trade secrets do not protect your invention from being discovered in other ways such as independent discovery or reverse engineering. If you are in a position to put various safeguards in place to ensure the secrecy of your software invention, trade secrets may be the best form of protection for your intellectual property. However, if you need to disclose various aspects of your invention for reasons such as attracting investors, you may want to consider patent protection instead.

Trademark

Trademarks do not actually protect technological advances, but rather protect names and symbols associated with products or services. Trademarks add an additional layer of protection to the goodwill associated with your company's name and software.

So, now that the options have been laid out, how do you decide which is best for your software company? Things to consider are cost, level of protection, length of protection, competitive advantage, and certainty of protection. A discussion with an intellectual property attorney can help you determine which forms of protection are best for you and your company.


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

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