 by Becky Mahurin
For many years software was generally excluded from patenting. It was considered a mathematical
formula, and thus, like the laws of nature, excluded from patenting. It was believed that if a
mathematical formula or algorithm were patented then it would exclude others from using them.
However, in the mid-1990s the courts and the Patent and Trademark Office (PTO) reversed their
stand on patenting software. The PTO even developed proposed guidelines on patenting software
and computer-related inventions. Included among those guidelines are instructions that if the
invention (software) directs a machine (a computer) and if the software directs a function which
can be considered "manufacturing," then the software may be patentable.
More logically, we need to consider if the software meets the same three requirements that all
inventions are asked to meet: novelty, utility and non-obviousness. If the software can pass
those three tests, then it is considered patentable.
Software can, of course, be copyrighted also. The advantages for copyrighting over patenting
include a lower standard for meeting copyright requirements. Copyrighting is less expensive
than patenting and is a much shorter process than patenting.
But patenting has advantages too. Patenting allows for a broader scope of protection, a monopoly
on the technology rather than just on the writings, increased licensing fees in general, and
larger court awards should infringement occur.
Both copyright and patent protection are available for software. One must decide which form or
whether both forms are the most appropriate mechanisms for protecting a particular software.
Should you have questions regarding software protection, please call me at 994-7868 or
by e-mail at rmahurin@montana.edu.
Becky Mahurin is director of the Intellectual Property Administration and
Technology Transfer at MSU.
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March 2002 
