Strategies for Obtaining Stronger Software Patents in Less Time

Software companies invest significant resources—time, energy, and finances—into research and development for innovative technologies that drive advancements across industries. However, without the protection that patents provide, these companies may find it challenging to bring their products to market and safeguard their investments from competitors. To enhance their patent portfolios and secure their innovations effectively, every software company should consider the following five strategies:

1. File Provisional Patent Applications

All countries operate on a “first to file” patent system, meaning the first entity to file a patent application for an invention will have superior rights over others. Filing provisional patent applications can secure an early filing date, which is critical for protecting intellectual property. Additionally, provisional applications can be a cost-saving measure, providing one year of preliminary protection while allowing companies to defer larger filing costs and continue refining product development if necessary.

2. Communicate with the Patent Examiner and Utilize Applicant-Initiated Interviews

In the United States, applicants are entitled to at least one Applicant-Initiated Interview during the patent prosecution process. These interviews allow the applicant’s attorney and the patent examiner to discuss the invention, prior art, and the application’s claims. They also provide an opportunity to propose amendments to the claims.

Such discussions are invaluable for clarifying the inventive aspects of a software invention, especially when dealing with issues of patent eligibility under Section 101. Challenges under 35 U.S.C. § 101 often arise because software inventions must demonstrate that they are not abstract ideas but rather include a technical solution or specific implementation that provides a tangible benefit. During these interviews, applicants can explain how their invention meets these requirements and address any concerns about patent eligibility.

For example, it may be helpful to demonstrate how the software solves a technical problem in a novel way or how it improves the functioning of a computer system. Effective communication with the examiner can reduce the likelihood of prolonged rejections based on Section 101 and lead to a more efficient prosecution process.  To learn more about pathways around “abstract idea” challenges click HERE

3. Leverage the USPTO’s Fast-Track Programs

The patent application process in the United States is notoriously lengthy, with the United States Patent and Trademark Office (USPTO) currently facing a backlog of over 780,000 unexamined applications. However, businesses can significantly reduce wait times by taking advantage of the USPTO’s fast-track programs, such as the “Track One” and “Accelerated Examination” programs for utility patents.

Utilizing these expedited processes not only accelerates patent examination but also provides a quicker determination of whether international patent applications should be pursued. Additionally, early patent grants can help businesses refine their claims for faster examination in other jurisdictions.

4. Consider the Patent Prosecution Highway (PPH)

The Patent Prosecution Highway (PPH) offers an effective way to streamline international patent filings and reduce examination costs. Under this program, a positive examination result from one patent office can be used to expedite examination in a participating country’s patent office. This system allows the second office to rely on prior examination work, thereby improving efficiency and reducing workload.

For software companies, the PPH program is a powerful tool for obtaining international patents more quickly and at a lower cost. With participating countries including the United States, Japan, and those in Europe, companies can leverage this program to extend their patent portfolios globally.

5. File Continuations, Continuations-in-Part, Divisionals, and Bypass Applications

Strategically filing continuation and divisional applications is a cost-effective method for broadening a patent portfolio. Continuations-in-part and bypass applications are particularly useful for incorporating new matter into subsequent filings when necessary. These follow-up filings enable companies to address evolving market demands and technological advancements while maintaining robust patent protection. Click HERE to learn more about continuation type applications.

Conclusion: Enhancing Patent Strategies for Software Companies

A well-drafted patent application with appropriately scoped claims is a cornerstone of a successful patent prosecution strategy. Conducting thorough prior art searches and addressing potential challenges early can strengthen an application and mitigate the risk of invalidation. While the patent process may not always be quick or straightforward, implementing these strategies can help software companies accelerate timelines, enhance the quality of their patents, and achieve their broader intellectual property goals.

This article was authored by Derek Fahey, Esq., a patent attorney with The Plus IP Firm. To learn more about Derek Fahey, click HERE.