patent protection for software is notoriously challenging.
Software may have a very short shelf life. It’s difficult to
describe precisely. There are issued patents that are written too
broadly. In a 3-part
series published in 2012, Eric Goldman goes in deep on how
software innovations pose unique challenges to patent systems and
what might be done about it. (For an alternative diagnosis, read
retired software engineer Martin Goetz’ rebuttal.)
Perhaps it is
no surprise that confusion reigns over what is eligible for patent
protection today. Andrei Iancu, the new director of the United
States Patent & Trademark Office, has spoken frequently and
forcefully about this issue in recent months.
areas of technology, it is unclear what is patentable and what is
not, and that can depress innovation in those particular areas.
Our plan at the PTO is to work within Supreme Court jurisprudence
to try and provide better guidelines,” he said during
a hearing before the House Judiciary Committee in late May.
it is still possible to obtain patent protection for software. So,
how do you get started? I’ve never brought a software related
innovation to market, so I asked John
Ferrell, my longtime Silicon Valley patent attorney, if I
could pick his brain.
His firm Carr
& Ferrell has represented many
hundreds of software startups over the years. For much of the
1990s, it represented Apple Computer, along with their subsidiary
software company at the time. Other notable software clients of
his have included Adobe, Autodesk, Intuit, Oracle and Sega. He was
Facebook's first intellectual property attorney. Sony Computer
Entertainment (including PlayStation games) has been his client
for nearly two decades. He is also an
active technology investor. Read
the second half of our interview here.
me he loves patents, because his passion is architecting
monopolies — and patents are often the cornerstones of strong
important is intellectual property when launching a new
innovation in the software space? (Attracting investors and
potential partners, dealing with infringement, etc.)
depends on the innovation and the product. Some products in the
software space are fleeting novelty items with a very short shelf
life. Inventions specific only to that product may not be worth
protecting. For example, a mobile game that relates to a movie
character may be super-hot for a few months, but then can be
expected to quickly fade. An invention related to the movement or
actions of a specific character, although possible to patent, may
not be worth the trouble of patenting.
if the patent application is accelerated and issues very quickly,
it may not merit the effort if the product will likely fade before
the year or so it takes to get the patent issued. (And there are
often better ways to protect these kinds of software products,
such as brand licensing of the movie character and copyright
other products, however, patents can be critically important.
Before software became patent eligible, there was an extremely
competitive period beginning in the late 1980s when Microsoft put
literally hundreds of significant software companies out of
business within a few years.
such company that comes to mind was a fairly large outfit called
Software Publishing Corporation (SPC). SPC had the leading
presentation software at the time, which was a program called
Harvard Graphics. For most business people, Harvard Graphics was
the standard for conference and conference room presentations. It
sold for about a hundred dollars on floppy disks. There were many
other presentation software programs at the time, but Harvard
Graphics was the leader.
developed a competing program (now called PowerPoint) that was not
as good at the time as Harvard Graphics. However, Microsoft
bundled PowerPoint with its word processor and spreadsheet
programs together for the same price as a copy of Harvard
Graphics. This bundling of PowerPoint and other programs into what
came to be Microsoft Office eventually killed Harvard Graphics and
SPC along with many other companies. The wisdom at the time was
that competing directly against Microsoft had become nearly
impossible. Because if an application sold well, Microsoft would
develop a competitive product and give it away for free in their
operating system or Office bundle.
it was in response to Microsoft dominating the market, or the
natural swing of the evolutionary pendulum, that around this time
the courts recognized software patents as allowable subject
the late 1990s, software companies were able to protect their
innovations with patents and creative companies like Adobe,
Autodesk, and Intuit began to quickly grow and flourish.
property protection of software has played a critical role in the
growth of competition in the field over the past two decades.
would you advise startups and companies developing a software
related innovation in the United States do first?
most important advice I can give to a startup wanting to build
strong intellectual property protection is to first understand why people
are buying their product or service.
is it about the particular product that is driving customers to
write a check? It's likely not about the technology at all, but
rather it's about a unique experience the buyer gets when using
wants a quarter-inch drill bit. What they really want is a
quarter-inch hole. It's
the unique experience that we ultimately want the patents to
protect. It’s not about the tech.
the right way to think about obtaining patent protection for
key is to not think about software as just software. Software is a
tool that lets us do something real, something useful, something
customers are not shopping for technology; rather they are looking
for solutions to difficult problems. Useful solutions are the
essence of invention, and one of the important goals of our patent
system is to promote invention. With a very few exceptions
(nuclear weapons secrets, laws of nature, etc.), new, useful and
non-obvious solutions are always patentable.
does the software patent application process differ from other
types of innovations, such as medical?
much of our technology today contains software that there are
blurred lines between what we used to refer to as software patents
and other innovations like medical devices and hardware
technology. It wasn't long ago when we understood that tractors
were relatively simple mechanical devices, but today tractors are
computer platforms jammed full of processors and computer code.
should startups budget for their intellectual property
for intellectual property is really a function of the nature of
the startup. A donut shop opening in Detroit may decide to
register their name as a trademark and leave it at that. A
venture funded tech startup, however, may have an immediate need
for a monopoly patent portfolio to protect its market from
The key in
either event is to have a vision of where the company is going,
and what goals would be achieved by investing in intellectual
property protections. When cash is tight, as it is with most
start-ups in the beginning, it's so important to have a roadmap
in order to focus investment only on IP that is strategic to
achieving goals. Non-strategic investment is just money wasted.
individuals, startups and companies on a budget, what
intellectual property tools have the most value?
valuable IP tool for a startup or for any company is an IP
roadmap. Two of the many great benefits of being a startup are
that there is a complete absence of historical baggage and
second, the possibilities for unimagined success are endless.
would start a journey without a destination and a roadmap
clearly in mind? If our goal were to get to Cleveland — hey,
it’s on my bucket list — we would never think of traveling there
by randomly visiting other cities, one perhaps leading to
if a company’s IP ‘strategy’ is merely to collect patents
randomly, then at any point in time all the company will ever
own is a box full of random patents.
To build a
true monopoly and to protect the unique experience that keeps
customers engaged, it’s essential to start with an IP monopoly
roadmap of where you are going and a strategy of how you will