Practical Suggestions For Successfully Developing A Patent Portfolio In A Software Company

Originally published on 27 February, 2001

The development of an effective patent portfolio strategy for a software company, whether large or small requires a coordinated set of processes which address training, motivation and reward, and efficient application development. Each of these areas will be discussed in terms of today's cultural environment as perceived by the author. This perception is based upon experiences gained in managing programmers/software engineers for 20 years in the development of scientific and commercial applications and systems, and over six years of software patent prosecution and helping to build a patent portfolio at Sun Microsystems, Inc. The thoughts and suggestions are those of the author and are not necessarily the views of nor endorsed by Sun Microsystems, Inc.

While the following discussion focuses primarily upon companies that develop and sell computer products, the comments apply equally as well to enterprise companies that have large in-house programming staffs. Companies such as Texaco, Inc., American Airlines, Wells Fargo Bank, Charles Schwab, etc.

The Culture Of Software And Those Who Create It.

A number of studies of software engineers/programmers over the past 30 years have shown a high correlation between persons with musical training and creative and effective programmers. It is generally conceded by most people, that software development is more art than science. Gifted software developers are more like gifted musicians or composers or other artists, than they are like engineers. Indeed, it is only in the past 10 years that some engineering schools have added computer science to their engineering curricula.

Thus the culture of software developers tends to be less conducive to patent portfolio development than the mechanical and hardware based arts. This is not to say that engineering formalism and proven development rigors have not been successfully applied to software development. However the software development process remains loosely formal and highly artistic.

Very few software developers including recent computer science graduates have had any training in Intellectual Property law, whereas many engineering graduates have some exposure to patents, engineering notebooks, etc. Many developers have some sketchy understanding of copyright law but very few have any real understanding of patent law. In many cases, patent law is grossly misunderstood and actively resisted by software developers. The mistaken notion that "ideas" can be patented as opposed to specific implementations leads to misguided opposition to software patents. One still frequently hears comments like, "A person should not be allowed to obtain a patent on the idea of a word processor" (or spell-checker, or debugger, or calendar manager, etc., etc.). Similarly, one still hears comments like "whatever I independently create should not be attacked by someone else who claims to have a patent on the idea."

Related to these thoughts are those of many artistic developers who say "Look, I am not creating anything new or novel here. I am just taking old ideas and making them work in a different combination or on a different platform or in a different way." "There is nothing patentable in this, it is just a different compiler. Compilers have been around for years." The essence of these misunderstandings is a lack of training in "what an invention is?" "what's Patentable?" These issues are discussed elsewhere in this book but these are fundamental questions which must be articulated to software developers in ways which are simple, non-legalistic, and relevant to software.

Other cultural characteristics of software developers create impediments to the patent process. For example, it is not uncommon for a software development group of from 3 or 4 to perhaps 20 or more persons to meet to discuss a technical problem and to "brain - storm" about possible solutions. This creates serious questions of inventorship. Thus specific...