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We are a UK-based web start-up and as far as I know it is not possible to patent software in the UK or EU (IMHO a good thing).

But we would like to protect ourselves in the US by making a provisional application. (The website after all is accessible globally.)

Has anyone had success with this (from the UK)? If not, and you have made such an application in the US, do you know what the requirements are? For example do I need a US registered office?

I've had a look at the USPTO website and there is no information for this particular scenario.

Any comments much appreciated.

Thanks!

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Talk to an IP lawyer. One based in the UK should be able to help you. – Susan Jones Mar 16 '12 at 12:00
Damn, why didn't I think of that? :-) – Noel Abrahams Mar 16 '12 at 12:02
I'm not sure that it's possible to get a patent for software in the US either. I think software is covered by copyright laws rather than patents – Susan Jones Mar 16 '12 at 12:04

5 Answers

up vote 1 down vote

The answers are fairly bad so far, so let me try to be clear: of course you can file a patent in the US. It doesn't matter at all where you are based. A US patent will protect you from anyone in the US doing the same thing that you invented. Copycats in Europe and Asia will not be prevented from copying you, but they won't be able to reach the US market, only you will.

Patents are inventions by individuals who typically assign their patent to their employer. The employer therefore is usually the one spending the $20K necessary to file a full patent. I could write a novel about patents, so I'll stop here for now.

I'll just conclude by saying that unless you are in a very specific industry, patents are mostly useless. You are way more likely to fail because no one cares about your product, rather than a copycat. Even Socializer's patents didn't stop MySpace and Facebook.

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alain, it is possible to apply for a worldwide patent that gives you 30 Months in which to file individual applications in PCT member states. – Noel Abrahams Mar 18 '12 at 17:06
i don't like patents myself, but I think they are a necessary evil - a sort of last resort and an asset to carry on your balance sheet. Regarding Facebook, I believe yahoo are suing them for some items. – Noel Abrahams Mar 18 '12 at 17:11
up vote 0 down vote

You are mistaken in thinking it is not possible to protect your software with a UK or European patent. To quote a wikipedia citation:

any invention which makes a non-obvious "technical contribution" or solves a "technical problem" in a non-obvious way is patentable even if that technical problem is solved by running a computer program".

Having said that, it may make sense to go straight to the USPTO. As I understand it, the US system is unique in giving you one year after provisional application to get sufficient funding and to write your full application.

Think where your customers and competitors are based. IANAL.

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paperjam, I did read that wiki article before posting. The UK law appears to only protect "technical solutions" and not business related solutions. My understanding of that is if I were to invent a new method of communication between mobile devices using software then that is a technical solution and patentable. But a lot of what goes into a website are just solutions to business problems and hence not patentable. Please let me know if you think otherwise. – Noel Abrahams Mar 18 '12 at 17:15
up vote 0 down vote accepted

Response received from the USPTO:

Thank you for contacting the USPTO Contact Center.

The patent laws of the United States make no discrimination with respect to citizenship of the inventor. Any inventor, regardless of his/her citizenship, may apply for a patent in the same basis as a U.S. citizen. There are, however, a number of particular points of special interest to applicants located in foreign countries.

For information on filing provisional applications for patents, please see: http://www.uspto.gov/patents/resources/types/provapp.jsp

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up vote 1 down vote

Perhaps there is some confusion. Companies can not apply for patents in the US, only individuals. Once a patent is granted, an individual can assign the rights to a company but only an individual can be the inventor.

Anyone can apply for a patent in the US, there is no citizenship requirement.

As for a US office, this does not apply since it is an individual (or individuals) who will be applying, not the business.

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while the inventor is an individual, the USPTO submission is carried out by a company (or individual), right? How else does Yahoo own 3000 patents? – Noel Abrahams Mar 16 '12 at 11:55
Companies have the money to spend and that is how they have so many patents. It is expensive for an individual to apply for say 10 patents (at least in the USA the cost varies between 50K to 100K for 10 patents) – user16944 Mar 16 '12 at 13:13
The way companies get patents is by assignment. In other words a person (call him Mr. X) invents something while employed by Company Y. His employment contract requires him to assign the rights to Y. Y pays the fees for X to apply for the patent and the patent is issued to X. X then assigns the rights in the patent to Y, as required by his employment agreement. You can think of "assigning the rights" as selling the patent, and the payment was the salary he has been receiving. – JonnyBoats Mar 16 '12 at 17:25
@JonnyBoats, I hear what you are saying. BTW, the USPTO responded to my email and said okay. But thanks all the same. – Noel Abrahams Mar 16 '12 at 19:21
up vote 0 down vote

Even in the USA you cannot apply for a patent once you have developed a software. You can copyright the code. But if your software is using some unique algorithms and problem solving approach that is novel, then that is patentable. Usually what people do is apply for Provisional Patents on several ideas first, then seek Seed Money (with Provisional Patent, it might comparably be easier). Then start building the software and when the software reaches the first presentable version, then seek for Venture Money.

I have been doing it, so I know what I am saying.

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My question is: how does a UK company apply for a US patent? – Noel Abrahams Mar 15 '12 at 14:18
I think you ought to get a patent from the country of residence first (if I am not wrong). A similar rule here in the USA is after you get a patent here you can only apply for patent elsewhere after a year. – user16944 Mar 16 '12 at 1:10
It is not possible to get a patent in the country of my residence. Perhaps it might help to read the question again carefully? :-) – Noel Abrahams Mar 16 '12 at 9:34
Point noted, as an individual you can apply. – user16944 Mar 16 '12 at 13:17
Incorrect. In the US, you can patent an invention up to 1 year after you made it public. This is very different from the rest of the world by the way. In Europe, once you publicly disclose your invention, it's too late to file a patent. – Alain Raynaud Mar 18 '12 at 0:35

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