Last summer in Austin, TX , I was working on an iPhone app concept for a smart grocery list. The idea was to create an algorithm that determined what you were most likely to buy at a grocery on any given day by analyzing your past purchase history. App users wouldn’t have to worry about brainstorming lists anymore and grocery stores, which would be able to access the application, would have the opportunity to market to users as they shopped.
I had a written five page “business outline” of the idea, tentatively called MyShopper, and was trying to figure out what to do next. I didn’t know how to code, and I was unlikely to meet any developers until I got back to school, so I decided to look into getting a patent.
A quick Google search told me that I couldn’t patent an idea or software. But I wasn’t really sure what that meant. It made sense that the average Joe wouldn’t be given the exclusive rights to every idea that popped into his head. But how could it be that cutting edge software wasn’t protected by patent in the same way that the most recent nanofiber is.
To figure things out, I called a patent lawyer that my Dad is friends with.
“Hey Steve, I’m Mike Petkevich’s son. I’ve got this idea for an iPhone app and I’m thinking about patenting it. The app automatically generates a shopping list by –“
“Daniel, I’d love to help you, but don’t tell me about your idea! I can’t give you specific legal advice if you’re not my client.”
“Oh. Ok. I have a few questions – if you don’t feel comfortable answering some of them, just don’t. First, I’ve got an idea for a smartphone app, and a vague high-level plan for how it will function. Can I patent it?
“Sure.”
“How does that work? Is code generally patentable”
“Code itself can be protected by copyright, but its useless to. The copyright only keeps people other people from using the exact same code as you. It doesn’t prevent them from writing different code that does the same thing, which is pretty easy to do. That’s why people patent software. Patents protect a machine or process, either of which can be argued to be software.”
“Wait, but software isn’t a physical thing.”
“Think of it this way. New software gives your computer new capabilities that can be patented in the same way as a gear that improves the performance of a drill. You’re patenting the added capability the software provides to a computer.”
“Make sense. How specifically should I describe my app in a patent application? Do I need to include any code?”
“You don’t need to include any code. You need a list of technical specs that someone who knows how to code could use to build the software.
“Ok. How should I word the application?”
“That’s complicated. Remember to be as vague as possible. In the legal world, you always want to be able to explain yourself later. Also, I’m charging your Dad $100 for this call.”
“What?”
“Just kidding. Give me a call if you need anything.”
“Bye Steve.”
“Bye.”
So this is what I learned from my talk with Steve the patent lawyer:
– Software is patentable as something that adds capability to a machine
– Code isn’t patentable
– Patent applications for software require guidelines that a software engineer could use to develop the software.
– Wording a patent application correctly is really tough.
I was pretty happy with what Steve told me because it meant that I could patent my app without writing any of the code for it. Then I could develop it without worrying that someone would come up with a similar app first.
I didn’t end up patenting the app because the process just seemed to complicated. And come to think of it, the only part of the app I could have patented was the algorithm that trawled your past purchase history to determine what you needed or wanted on any given day. The rest of the application was pretty simple.
Now I’m wondering if I would have even been justified in patenting the algorithm if I had developed it. I couldn’t do it on grounds of protecting me from competition because no one would have access to it. The algorithm would process data on my servers and users would only see the resulting shopping list from this process. Competitors could develop algorithms that did the same thing as mine, but they wouldn’t see the specific logic behind it.
As more software becomes web-based, maybe the relevance of software patents will decrease. Online software has a separate front end for users, and it keeps its guts, in a backend that only its creators have access too. You could patent the guts, but why bother if no one else is going to see them. And you probably couldn’t patent what the guts do, because it would obviously retard the progress of software development. Imagine if Facebook and Twitter were patented and no one else could develop social networking sites. That would be ridiculous.
Here’s to the end of patents in software.
Yale Law Tech 