The Swinging Pendulum for Software Patents: What Does it Mean for Startups?
Just last month, the United States Patent & Trademark Office (“USPTO”) issued an important Memorandum that appeared to tip the balance in favor of a far less difficult path forward for software patents. Although it is quite tempting to have a kumbaya moment, I believe that a prudent approach forward is important — especially for Startups, whose lifeblood may depend on their patent portfolio.
It appears that every few years the challenges to obtaining a software patent fluctuate from one extreme to another. For example, it was just a few years ago that a patent application that was drafted without certain technical features was deemed to have an uphill battle in terms of being granted. Yet, the requirement for those technical features was often unbeknownst to the patent attorney drafting the patent application at the time the patent application was drafted.
In light of the recent Memorandum, a question arises as to how newer patent applications should be drafted. If some of the stricter requirements regarding software patents are no longer applicable, why not just place less emphasis on those requirements going forward?
To answer succinctly, my general approach to drafting software patent applications has not changed in view of the Memorandum. If anything, I am even more concerned about how a software patent application should be drafted given that software patent applications have been reviewed in such different ways, depending on a given year.
From a Startup’s perspective, one approach may be to have a patent application prepared using the most stringent standards. For example, imagine if a patent application for a Startup’s core technology is prepared according to an approach that does not emphasize its technical features. Although that patent application may pass muster by current standards, it may not even be examined for a year or two, at which time it is not completely unforeseeable that the pendulum could swing back the other way yet again. In other words, if a Startup prepares a patent application according to the more lax standards of today for an important invention, what does it do if the standards of tomorrow revert back to being more stringent?
Accordingly, Startups may want to pursue what might be the safest approach of still preparing patent applications according to the most stringent standards, thereby seeking patent protection irrespective of where the pendulum has swung when their patent application is examined.
Patent Ingenuity, P.C. has offices in Beverly Hills, Silicon Valley, and San Francisco to assist clients through the software patent application process.
