Also, since copyright law, unlike patent law, can vary among circuits, more uncertainty exists with respect to copyright law. The number of software patents reportedly increased eightfold between 1977 and 1996. Though patents cost more, if a client is careful to choose a law firm that has a healthy number of experienced patent attorneys with electrical engineering and computer software degrees, the cost of preparing software patents can be controlled and accurately estimated. There are many considerations to keep in mind, most of which are distinctive to software patents. While it is now much easier to obtain such patents, the struggle to define statutory subject matter continues in many cases.
Some approaches can lead to undesirable results.
Thus, the selection of a patent attorney for software patent applications is an important decision that should be based on the attorney's experience in drafting software patent applications and his or her understanding of software patents in particular. For example, a skilled attorney would already be implementing many important rules from the examination guidelines, one of which relates to an important restriction on the specification of the patent application. That restriction is based on the new revelation that the determinative question in the statutory subject matter analysis, potentially taking place only when the patent is litigated, may well be whether the specification is directed to a specific machine or manufacture or, conversely, whether it is directed to any and every computer implementation of a process that has a practical application in the technological arts. The specification will be scrutinized for language corresponding to broadly expressed or to newly defined claim elements to determine the breadth to be assigned to those elements. Conversely, broadening language in a specification may result in a finding of nonstatutory subject matter in the absence of a clearly disclosed and claimed practical application.