USPTO Roundtable on Software Patents

The U.S. Patent and Trademark Office is seeking to form a partnership with the software community to enhance the quality of software-related patents. According to the USPTO, “The Software Partnership will be an opportunity to bring stakeholders together through a series of roundtable discussions to share ideas, feedback, experiences, and insights on software-related patents.”

The announcement addresses criticism that the “patent wars” between companies like Samsung and Apple signal that the system is broken. However, it was noted  that patent protection must be “properly tailored in scope, so that programmers can write code and engineers can design devices without fear of unfounded accusations of infringement.” The new initiative appears to be designed to further that end.

The first  two roundtable events were held in Silicon Valley on Tuesday, February 12, 2013, beginning and in New York City on Wednesday, February 27, 2013. The roundtable events are available via Web cast.  Details will be available on the USPTO’s web site before the next events.

As detailed in a Federal Register Notice, the USPTO is initially seeking feedback on the following topics:

  • Establishing Clear Boundaries for Claims That Use Functional Language: The USPTO seeks comments on how to more effectively ensure that the boundaries of a claim are clear so that the public can understand what subject matter is protected by the patent claim and the patent examiner can identify and apply the most pertinent prior art.
  • Future Discussion Topics for the Software Partnership: The USPTO seeks public input on topics related to enhancing the quality of software-related patents to be discussed at future Software Partnership events. According to the agency, the topics will be used to “extend and expand the dialogue between the public and the USPTO regarding enhancing quality of software-related patents.”
  • Oral Presentations on Preparation of Patent Applications: The USPTO will issue a Request for Comments on Preparation of Patent Applications. The purpose of this forthcoming Request for Comments is to seek public input on whether certain practices could or should be used during the preparation of an application to place the application in the best possible condition for examination and whether the use of these practices would assist the public in determining the scope of the claims as well as the meaning of the claim terms in the specification. The USPTO is seeking early comments from roundtable participants to the extent that they pertain to software-related inventions.

How Can I Help?

If you, or someone you know, need help with filing a software patent or any other Intellectual Property issue, or just need advice regarding how best to protect your ideas and your brand, please contact me for a free 30 minute consultation at or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +


How to Copyright Software

Software code can be registered as a literary work with the copyright office. In fact, copyright registration often affords the best legal protection for your software program. That’s because copyright registration not only ensures that no one may copy, distribute, or display the software without your permission, but also allows you to pursue legal action against infringers. In some cases, software copyright registration is a relatively easy process. In fact, if your application is filed online, the source code may be uploaded electronically in PDF format. Otherwise, you will need to print out the code and submit it with your paper application.  I don’t recommend that you file paperwork with the copyright office.  They have made statement to the effect that it will be years before they look at any paper filed copyright applications.  Use electronic filing (its cheaper too).

Here  are a few additional considerations-

1.  Software Programs Without Trade Secrets:

You are required to submit one copy identifying portions of the program (generally the first 25 and
last 25 pages of source code), together with the page containing the copyright notice (you should have a copyright notice placed in the header and footer of ALL your code). For a program less than 50 pages in length, applicants should send the entire source code.

2.  Software Programs With Trade Secrets:

If the software program contains trade secrets, you must include a cover letter stating that the claim contains trade secrets, along with the page containing the copyright notice (see above).  You  must also submit one of the following:

• First 25 and last 25 pages of source code with portions containing trade secrets blocked out,

• First 10 and last 10 pages of source code alone, with no blocked out portions,

• First 25 and last 25 pages of object code plus any 10 or more consecutive pages of source code, with no blocked- out portions, or

• For programs 50 pages or less in length, entire source code with trade secret portions blocked out.

Special Concerns for Web-Based Software:

If the software is available, online, you must submit identifying material for the screen displays in addition to the required source code.  The identifying material for the screen displays should be images or printouts clearly showing the screens. If using online registration, images of the screens may be uploaded electronically to the Copyright Office.

Revised Software Programs (ie. Version 2.0 of your software):

Each separately published version of a software program that contains new, copyrightable authorship must be registered separately, with a new application and fee. Registration of the first version may extend to the entire work if it contains no previously published or registered portions. Registration of any subsequent version covers only the new or revised material added to that version.

In many cases, it is advisable to consult with an experienced copyright attorney before seeking to register your software program to ensure your rights are protected.  Please contact me to schedule your free 30-minute consultation by email at or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.