Q: I have nearly completed development of a software package that allows users to record their personal theatre, music and dance experiences, including all details, just as they'd appear in a program guide. I want to protect the idea as well as the software. Is this possible?
A: The short answer is yes-you can now get a patent on such an idea and software method, provided it's novel and unobvious.
Up until a few years ago, the U.S. Patent and Trademark Office (PTO) and all of the patent courts firmly held that inventions involving business methods and most software were not proper subject matter for a patent, no matter how novel and unobvious they were. This was so despite the fact that Section 101 of the patent statutes stated (without restriction) that "Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent..."
However, you can't hold back a flood. As the composition of industry in the United States changed from a largely hardware-based economy (machines, hard goods and so on) to a more computer, service and paper-based economy, the PTO and the courts gradually felt the winds of change. Inventors inundated the PTO with applications for patents on software and business methods. The PTO and the courts gradually gave in. A major ice breaker occurred when the Supreme Court held, in the famous 1980 case Diamond vs. Chakrabarty that the above statement had no limitations-it covered "anything under the sun that is made by man." It excluded 1) laws of nature, 2) natural phenomena and 3) abstract ideas, including algorithms since these weren't considered made by humans and not proper subject matter for a patent.
So now, Cole Porter's song, "Anything Goes," also applies to what's proper subject matter for a patent. In other words, almost anything can be patented, provided it doesn't fall within one of the three exclusions above. It also must still satisfy the requirements of two other well-known sections of the patent laws. These sections require that the invention be novel (any difference to other patented products, no matter how trivial, will suffice) and unobvious to one with ordinary skill in the pertinent field of the invention. (We'll deal with these two other sections in a future column.)
To illustrate the new scope of Section 101, patents have been granted to Priceline.com for its reverse auction system and to Amazon.com for its single-click merchandise-ordering system. These patents cover business methods and their associated software. They're broad enough to cover the underlying ideas behind these systems. Also, the PTO recently granted patents on a method of playing a keyboard, a method of holding golf clubs, human genes, a mouse that's more susceptible to cancer and so on. So your idea of a system that allows people to record personal theatre, music and dance experiences as it would appear in a program guide is now proper subject matter for a patent. Provided that your invention also meets the novelty and unobvious requirements, the PTO will issue you a patent.
David Pressman, a practicing intellectual property attorney, is author of the bestselling book Patent It Yourself and the interactive software program Patent It Yourself, both published by Nolo Press. Formerly an electronic engineer, David has more than 30 years' experience in the patent profession-as a patent examiner, a columnist for EDN Magazine and a patent law instructor at San Francisco State University. Patent It Yourself can be obtained in bookstores (brick-and-mortar and online), from the publisher (www.nolo.comand through David's Web site (www.PatentItYourself.com).
The opinions expressed in this column are those of the author, not of Entrepreneur.com. All answers are intended to be general in nature, without regard to specific geographical areas or circumstances, and should only be relied upon after consulting an appropriate expert, such as an attorney or accountant.