How to determine whether software is patentable - Part 4

This is the fourth and final part in a series of articles on how to determine whether your software is patentable. If you are an inventor, an executive at a tech company, or a patent lawyer outside the U.S., this will help you to at least make a first pass determination of whether your software is worth considering for patent protection.  In each article in this series, we cover one criterion that you can use to evaluable whether your software is likely to be patentable.

Today, I will focus on whether your software controls something physical that is external to a computer. One reason that I waited until the final installment in this series to cover this criterion is that I did not want to give the impression that your software needs to control something outside of the computer in order to be patentable. I find that many people falsely assume that external control is required for patentability, even though this is not true.

We at Blueshift IP obtain patents regularly on software that does not control anything outside of the computer. If you do happen to have software that controls something outside of the computer, then that weighs very strongly in your favor. It will make your life a lot easier in getting a patent granted on your software. This criterion, therefore, is a very important one to consider, even though it is not necessary for patentability.

When I say,  “controls something outside of the computer,” what do I mean? The example I love to give is software in a car that controls the anti-lock braking system. When you hit the brake pedal and your car has anti-lock braking, the action of hitting the brake pedal sends a signal to a processor in the car, which determines how much force to apply the brakes and in what pattern to apply the force over time. There is software in the computer that decides how to pump the brakes and then the computer outputs a signal to the brake controller that controls the brakes accordingly. This is an example of what I mean by software that controls something physical outside the computer.  Other examples are software that moves a robot and software that controls an assembly line.

If you attempt to patent software that controls something physical outside a computer, you will nearly always avoid receiving an “abstract idea” rejection, which will make the task of obtaining the patent much easier.

You might imagine that there can be borderline cases, and that you might try to stretch the boundaries of what constitutes “controlling something physical outside the computer.”  For example, if your software calculates the result of a formula and then displays the answer on a monitor, is the software controlling something physical outside the computer? The monitor, after all, is something physical outside the computer.  Although in this case the software is controlling something physical outside the computer, the Patent Office will likely consider you to be attempting to game the system in a case like this, and will treat your software as not controlling something physical outside the computer.  This doesn’t necessarily mean that your software can’t be patented, only that you might have a steeper hill to climb.

This is another reason why it’s really important for you to work with a patent attorney who specializes in software patents because if you get into that kind of situation where it’s necessary to argue with the patent examiner about where the dividing line is between controlling something outside of a computer and not controlling something outside of a computer you’re going to need somebody who is intimately familiar with that dividing line and how it’s been defined by the law. 

I hope you have enjoyed and benefited from this series of articles on how to determine whether your software is patentable.  Feel free to use this series of articles as a checklist when trying to determine whether to pursue patent protection for any new software.  And feel free to reach out to us at Blueshift IP: Software Patent Experts, for guidance and help in obtaining software patents in the U.S.