APRIL 2022CIOAPPLICATIONS.COM9more challenging to prove willful infringement, and then they made it harder to obtain a patent when some similar technology pre-dates an invention in a patent application. If someone tells you not to search, DON'T LISTEN! Instead, seek to see what others have done. Information is power! It will make your patent stronger and enable better decision-making. If you find something close to what you want to protect, then you can make critical decisions immediately (e.g., drop it altogether, switch the business strategy, or aim the patent application in another direction). This is a much more savvy option than waiting years and tens of thousands of dollars into the US and international patent process only to find something that short circuits the entire effort. And, as I mentioned, with reasonable care, that potential patent applicant can still avoid the problem of the willful damage when they start commercializing the patented technology.4. Software is not patentable.I've heard this tossed around for decades. When I was a law student, someone gave me this advice and, of course, I naively believed it. At my next interview, I confidently declared this as a fact...only for the interviewing attorney to say, "Oh really. If that were the case, I wouldn't have a job right now." The software has been a controversial subject as long as I've been a patent practitioner, and the standards seem to change with some regularity. Right now, a lot of software patents (i.e., the processes that are implemented in software) may be in jeopardy, but many are just beautiful. The more technical the idea, the more likely it can be patented. When I teach classes and advise clients about patents, I like to say it this way: "Software is not patentable." The devil is in the details.5. My technology is provisionally patented.This one makes me laugh almost every time. I hear it most often when I listen to startups pitch for investments from my angel groups. The funny part is that quite a few unaware investors buy this line. In short, a provisional application is not a patent--it is an early part of the process for applying for a patent. A provisional application gives its owner a first date of filing for the technology, and the right to try to obtain their patent rights within one year of that first date. That's all. The technology still must undergo the rigor of the complete patent process. Steven G. Saunders is a partner and co-chair of Nutter's Intellectual Property Department. Clients of all sizes, from emerging companies to multinational corporations, rely on Steven's counsel for managing all of their intellectual property needs, including IP portfolio development, strategy, and evaluation, patent preparation and prosecution, product clearance, inter partes reviews (IPRs), litigation management, reexamination, and licensing. Drawing on his experience as both IP counsel and angel investor, Steven also conducts due diligence analysis in preparation of angel or venture capital investments, mergers, or acquisitions. Careful consideration of business strategy is key to ensuring a patent has valueSteven G. Saunders
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