As a software developer, investor, visionary that has invested significant time and resources into software technology, it is crucial not to share the details of your innovation until you have taken steps to protect it properly. Public disclosure or inadequate legal protection can risk your rights to commercialize and monetize your product.
When considering how to secure your software product from potential theft or infringement, it is essential to understand the key forms of legal protection offered under Intellectual Property (IP) law. Software products, functionality, and source code can be protected through various means, including trademarks, copyrights, patents, trade secrets, and non-disclosure agreements. In this guide, we dissect these forms of software protection and include key considerations for each method.
An initial, although not necessarily top, consideration for protecting your software tech involves trademark protection. A trademark cannot be used to protect an invention, coding, or software program. However, a trademark can be a protective and competitive measure for securing branding elements that identify, market, or sell your product. Trademark protection can include a product or company's name, a design, logo, color scheme, and identifying factors such as a unique sound played within an application (think of AOL's famous "YOU'VE GOT MAIL").
In the software industry, protecting your brand is just as crucial as protecting your product or service. Failure to do your research and secure the appropriate trademark protections early on could result in costly implications for your business.
Important Trademark Considerations:
In 1979, Congress decided that software source code would qualify for a similar scope of protection as literature under copyright law due to its typographical nature. Copyright protection is unique in that it can last for well over a century and requires minimal examination by the United States Patent and Trademark Office (USPTO). In addition, copyright protection allows registrants the ability to withhold proprietary code from the public, which may be an essential part of a software's competitive advantage.
One interesting note on copyright protection is that copyrighted materials are subject to the "fair use" doctrine, meaning that judges hold case-by-case flexibility to determine if the unauthorized uses of copyrighted material are permissible under four guiding factors. This particular doctrine played a landmark role in the recent Google v. Oracle Supreme Court Decision, where the Court determined that Google's copying of 11,500 lines of Oracle's Java SE code was indeed fair use of that material as a matter of law.
The most time-sensitive of all filings are your patent filings. You must file before releasing your product to the public. Keep in mind; our patent system is a first-to-file patent system - meaning, it will generally only award patent rights to the first patent applicant.
Software technology is patentable under International and US Patent law. While copyrights protect the expressions of a software product (e.g., the specific lines of code used), a patent can protect the functionality performed by the software in any of its codified embodiments. A valuable patent covers more than an exact rendition of your back-end. It may cover general architecture and inter-component operation, and functionality.
For an invention to be patentable, it must meet specific requirements regarding the subject matter, commercial use of the invention, and the invention's novelty and nonobviousness. Once eligibility is determined, there are two primary forms of patent protection for software: provisional utility patent applications and non-provisional utility patents. User Interfaces may be protectable with Design Patents as well.
For startups with limited funding or products in the early stages of development, a provisional patent application is the most cost-effective way to begin protecting an invention. A provisional patent application establishes "patent-pending" status with your priority to the patent rights for your invention. It also provides you with a 12-month window to file a non-provisional application, detailed below. A provisional patent application does not get reviewed, allowing you the 12-month window to put the finishing touches on your product, seek funding for your product, and develop a strong non-provisional patent application for commercialization.
It is important to know that a provisional patent application does not grant patent rights. A provisional patent application acts as a placeholder for 12 months.
To obtain patent rights for your software invention, you would need to file for a non-provisional utility patent or convert your provisional patent application to a non-provisional utility application. Once filed, a non-provisional patent application will undergo an examination process that can take over 18 months before resulting in patent rights.
When considering patent rights, bear in mind the importance of any proprietary information. If you do not want to expose key elements of your invention's functionality to the public, you may instead wish to protect your product through trade secret protection. Furthermore, DO NOT share your invention with a third party until you have filed for patent protection. Public disclosure can negate the novelty of an invention, making the tech unpatentable.
Before submitting a patent application for your software, you may be advised to perform a professional patent search to determine if any existing patents could prevent you from obtaining patent rights for your software. A product might not appear on the market yet, however that does not always mean it has not been invented yet. Additionally, the results from a patent search can provide valuable information for strengthening your patent application, claims, and overall commercial value of your product. If your goal is to monetize your product, make sure that you do it right!
Important Patent Considerations:
Do your homework: Often, the best place to start is with Due Diligence. Review the competitive and patent landscape to learn about the prior art, and craft your patent strategy accordingly.
First Come, First Served: The US patent system will only award a Patent on an idea or invention to the first inventor who files a patent application. If you aren't the first to file, you risk losing your patent rights.
The Clock is Ticking: If you don't file a US Patent Application within 12 months of public disclosure (such as sharing your idea with others) or within 12 months of offering your invention for sale to the public, you lose your patent rights. Even still, the longer you wait, the greater the risk of someone else filing a patent application for the idea you came up with first.
Important Note: Although the US gives you a 12-month "grace" period to file a patent application after your first public disclosure, most other countries in the world do not. This means, in those countries, you will have lost your patent rights if you've made a public disclosure before filing the US patent application.
Filing a Provisional Patent Is a Great Place To Start: It's affordable, and it's an essential takeaway from these three facts. A provisional application secures your priority date (your spot in line) to the patent rights while developing your idea, market it, and raise funding. This helps to ensure that no one will beat you in the patent office. Our platform has made the provisional patenting process quick, easy, and affordable for thousands of entrepreneurs and businesses across the nation.
Trade secrets are a route of legal protections for a product that involves proprietary components or discrete information that creates an economic advantage to the trade secret owner. If an aspect of your software creates value from its secrecy, consider trade secret protection. Trade Secret law provides federal penalties against any individual or entity that misappropriates your trade secrets.
Unlike patents and copyrights, trade secrets do not undergo a registration process and have no expiration. However, trade secrets can be used with patents to add an extra layer of protection for your product.
Keep in mind, simply marking certain information as "Confidential" may not be enough to qualify it for federal trade secret protection. Trade secrets involve access restrictions, access logs, and other criteria you should consult a professional about.
Finally, non-disclosure agreements are an important component of software protection through all phases of a software's lifecycle. NDAs can prevent theft and infringement by establishing confidentiality, ensuring that your idea remains yours alone if you outsource any aspects of coding. Failure to establish a formal legal agreement with additional developers or contractors can risk your intellectual property rights and the overall success of your product. Where intellectual property disclosures are involved, NDA should thoroughly consider IP ownership and assignment of IP rights within the agreement itself.
A thorough understanding of the software protections available can ensure the overall success of taking your product to market. Trademark, copyright, patent, trade secret, and NDA protections all provide various layers of security and value over what could become your most valuable asset. When determining which route to take, it is always best to speak with an experienced patent attorney who understands the nuances of software law.
The information provided in this article does not, and is not intended to, constitute legal advice.