Software

McHale | Slavin has considerable experience representing clients in the computer software industry. In addition to our attorneys and registered patent agents with private sector software experience, our staff includes former patent examiners who specialized in this area while with the U.S. Patent and Trademark Office. This broad expertise enables us to stay abreast of the latest developments in the prosecution of these applications and to assist clients in obtaining protection for their novel ideas or in determining if trade secret or copyright protection is proper. The Supreme Court addressed the future of business patents and software patents in the case of Bilski v Kappos, 130 S.Ct 3218 (2010). The Supreme Court affirmed the Court of Appeals for the Federal Circuit’s (CAFC) decision; however, it reached its decision based on different grounds, holding that the Bilski patent was an abstract idea and therefore not patentable subject matter. More importantly, it refused to categorically exclude business patents from potentially obtaining patent protection under U.S. Patent Laws and rejected the use of the machine or transformation test as the sole test for determining patent eligibility. Case law such as this must be monitored closely in determining what type of coverage may be obtainable. While the Federal Circuit has largely made "software" unpatentable at this time, they did not prevent the patenting of a computer that accomplishes a certain defined task. Given that a computer is for all intents and purposes completely useless without software, you can still protect software in an indirect manner by protecting the computer itself, and by protecting a computer implemented process. Rather than describing the process as it would be done by a human actor, you define the process as it is done by a computer. The inability to actually call the invention "software" does, however, mean that the disclosure needs to be much more detailed.

Our clients include hardware and software vendors, small enterprises, start-up companies and individual inventors. Subject matter of these patents include networks, voice recognition, imaging, user interfaces, operating systems, windowing, image processing, consumer and industrial application programs, and graphics. We have drafted and negotiated agreements and licenses for the development and distribution of various software applications, including source code licenses and negotiation of source code escrow agreements. Contact us for additional information or to schedule a consultation.