Protecting Software: The Trade Secret or Patent Decision Tree

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For decades, innovators in software have turned to the patent system for protection of their ideas. It was not a surprising development. The patent system provided broad, monopoly protection against competitors which often lasted long past the effective life of a software product. Further, that protection often came without the need for a comprehensive disclosure of the software being patented. The push for patent protection was also fueled by a series of large, highly publicized damage awards supported by claims of software patent infringement. The tides however are undoubtedly changing. Software patents are becoming increasingly difficult to obtain and are becoming even harder to hold in light of the newly created Patent Office inter partes review procedures where software patents make up a significant portion of contested patents. Further, although the Supreme Court sent few signals during the recent oral argument in Alice Corporation Pty. Ltd. v. CLS Bank Int’l., U.S., No. 13-298, ( argued 3/31/14) (87 PTCJ 1289, 4/4/14)—a case dealing with the patentability of software—that it was poised to abolish software patenting altogether, future cases may give it the opportunity. Even if not by edict of the Supreme Court, given a substantial public outcry, ongoing legislative action may itself unravel the patentability of software. Given the multiple fronts of assault directed at software patents, what strategy should a software company execute in light of these developments? Consider calling the trade secret function.

Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 88 PTCJ 222, 5/6/14. Copyright 2014 by The Bureau of National Affairs, Inc. (800-372-1033)

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