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(Message started by: Tina on Jan 24th, 2005, 3:16am)

Title: Software Patents - worth applying for?
Post by Tina on Jan 24th, 2005, 3:16am
I have been referencing your site and find it very useful. Thank you.

We have a software innovation for which we could apply for a patent. However, I doubt this innovation is commercially applicable as it will be difficult to sell as a 'product.'

Therefore, is it worth getting a PCT patent altogether? In concept, I am a believer in seeking patent 'rights.' However, I has asked some people in the software industry and they say that this is a total waste of time & money.

I also have in mind that having patents may add to our (currently small) company should we be in the position to seek (private equity) funding in the future ... but then some people are telling me this factor is less & less important.

Last, if we do opt for seeking a PCT patent, must we go through our national office? Anyway to apply directly to PCT, reducing our cost?

Would greatly appreciate your insights ...

Title: Re: Software Patents - worth applying for?
Post by Jonathan on Jan 24th, 2005, 9:20am
Do you want to try to prevent competitors from using your invention? Would it hurt your business if they did and you don't have a patent to potentially stop them from doing so? If yes to either question, then you could probably get some sort of benefit from pursuing a patent.

From your email, it sounds like you don't understand what a PCT application is. PCT stands for the Patent Cooperation Treaty and allows a patent applicant to file one patent/PCT application (sometimes referred to as an international application). The PCT application will then receive an initial, non-binding review for patentability and the patent applicant then has the option to send the PCT application to as many foreign country national patent offices as they like (and can afford) to receive an examination for a national patent (e.g. a US patent, Canadian patent, etc). When the PCT application is sent to the various national patent offices, the original PCT application has ran its course as it is then replaced by the various foreign country patent applications. Therefore, there is no such thing as a PCT patent. Additionally, the PCT application can only be sent to those countries that have ratified it and are a member of the WTO. The only country of note that is not part of the PCT is Taiwan, so all Taiwanese patent applications have to be filed directly in Taiwan.

The main benefits of the PCT is that you get to file one application for many countries. The other major benefit is that the cost of applying for a patent in multiple countries can be delayed (not reduced) for a few years.

If you know only want to seek patent protection in one country, the PCT is probably not the way to go as you can just directly file in that country.

If you do decide to go ahead with a patent application, you would do well to consult with a patent professional to fully weigh all your options.

Title: Re: Software Patents - worth applying for?
Post by Tina on Jan 25th, 2005, 7:16am
Thanks, Jonathan, for your thorough explanation.

I guess my answer is 'no' to your questions.  In the course of developing our software, we created a security mechanism that is innovative and closes many of the security 'loopholes' through which I.T. people currently take advantage.  However, we simply cannot (effectively) sell this mechanism in 'product' form as it would be very easy for customers of this security mechanism to pass along the technology.  However, we would like to seek some private equity investments later in the year and wonder whether having some sort of patent pending would add to the 'assets' of our company.  But it does seem that this process may not be worth it if our invention cannot be commercialized nor is it our main business.

Sorry about my sloppy lingo with PCT ... yes, I realize that I need to subsequently apply for patents in the individual countries ... I believe the appeal of PCT is that (if approved) it helps 'mark' the application date of our patent (pending individual countries' subsequent patent search).  I hope my understanding is correct.

Thanks again!

Title: Re: Software Patents - worth applying for?
Post by Jonathan on Jan 25th, 2005, 9:47am
You shouldn't post any more details of your invention on this public forum.

Having a pending patent application covering your core technologies often can be useful in seeking funding to continue your business development. Consulting a patent practitioner should help you more fully identify the worth of this invention in that respect.

You are correct in that filing a PCT application will secure your filing date. A filing date can also be established by filing a national patent application. You would then have up to a year, from the filing date of the national application, to directly file in other foreign countries or to file a PCT application that could eventually transition into foreign / national stage applications. The PCT application or directly filing in foreign countries can claim priority to that 1st national patent application, thus essentially having the original filing date of that 1st application.

Regarding a PCT application being 'approved', yes there are requirements to be met to secure a filing date. After that, a PCT application will receive a non-binding examination - that is, it is not approved or disapproved. The non-binding examination merely provides an opportunity for an applicant to address any shortcomings (identified in the non-binding examination) in the PCT application before it is passed to the various foreign patent offices for further, binding examination.

Title: Re: Software Patents - worth applying for?
Post by Tina on Jan 26th, 2005, 12:24am
Thanks again. One last question: can the PCT application be submitted by a company/individual directly or must it go through a practitioner? If the latter, presumably we need to go through the patent agent/office in our country ... there are no other methods for us to submit this application?

Title: Re: Software Patents - worth applying for?
Post by Jonathan on Jan 26th, 2005, 8:44am
In the United States, the inventor can directly file a PCT application with the U.S. patent office or they can be represented by a patent attorney or patent agent. I do not know if a corporation or other entity that was assigned an invention can apply for a PCT application through the U.S. patent office.

I am not familiar with filing of PCT applications in other countries (in terms of who can apply for the PCT application), so I won't comment on that.

Title: Re: Software Patents - worth applying for?
Post by Tina on Jan 27th, 2005, 9:49am
Jonathan, I very much appreciate your replying to my questions.  Your feedback is very helpful + thanks again.

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