Strategies For Obtaining Stronger Software Patents in Less Time

DEREK FAHEY, ESQ.

Software companies invest significant time, energy, and capital into research and development. Without patent protection, they may struggle to bring products to market and protect those investments from competitors.

1. File Provisional Patent Applications

Because patent systems generally operate on a first-to-file basis, an early provisional application can secure a critical filing date. It can also defer larger filing costs for up to one year while a company continues development.

2. Communicate With The Patent Examiner

Applicant-initiated interviews allow counsel and the examiner to discuss the invention, prior art, and possible claim amendments. For software inventions, these discussions can be especially useful when addressing patent-eligibility concerns under 35 U.S.C. § 101.

Applicants should be prepared to explain how the software solves a technical problem, improves computer functionality, or produces another concrete technological benefit.

3. Use USPTO Fast-Track Programs

Programs such as Track One and Accelerated Examination can significantly reduce patent examination time. Earlier examination also gives companies faster information about whether related international filings are worth pursuing.

4. Consider The Patent Prosecution Highway

The Patent Prosecution Highway can use a favorable examination result from one participating patent office to accelerate examination in another. For software companies pursuing international portfolios, this can reduce cost and improve efficiency.

5. File Continuation-Type Applications

Continuations, continuations-in-part, divisionals, and bypass applications can broaden a portfolio and preserve strategic flexibility as products and markets evolve.

Conclusion

A strong software patent strategy combines careful drafting, prior-art analysis, early filing, examiner communication, expedited examination, and thoughtful continuation practice.