Protecting software already poses unique challenges for intellectual property attorneys. With the emergence of a new approach to software development, commonly referred to as “agile software development,” intellectual property attorneys may find it even more difficult to properly protect the intellectual property components of software projects, especially in a post-Alice environment that is more hostile to patent protection for software code. Protecting software and its code is a vital part of intellectual property law. The software industry is a six-billion dollar industry and employs millions of people globally. In the past, traditional software development projects were meticulously planned and were expected to commence in multi-part stages. In fact, traditional software development projects could often be expected to follow the same five-step phasing. Such predictable progression allowed for careful planning, investment, evaluation, and could be used to raise necessary capital in some cases.

Recently, however, new approaches to software development have emerged. One such approach, generally referred to as “agile software development,” favors more adaptable development that often pivots in response to user feedback and other potential market factors.  Because agile software development emphasizes shortened development periods, however, it can make the job of intellectual property attorney especially taxing because the attorney generally does not enjoy the same amount of predictability, time, or detailed planning as previously allowed by traditional software development.

Traditional software development generally allows intellectual property lawyers to better evaluate valuable intellectual property because the traditional software development approach is a more predictable, drawn-out process. Traditional software development normally follows the “waterfall approach.” The “waterfall approach” gets its namesake from the idea that its progression mimics a “waterfall” in that each phase flows from one to another, top to bottom. The five steps of the traditional software development’s “waterfall approach” includes: 1) the requirements phase; 2) the design phase; 3) the coding phase; 4) the testing phase; and 5) the deployment phase. Generally, traditional software development is expected to occur over a significant amount of time. A project may span several months, or even years.

Because the “waterfall approach” requires that each phase of the project be detailed and well-defined, such an approach has generally been highly conducive to intellectual property planning. Armed with such meticulous blueprints for software development, intellectual property attorneys can often sufficiently plan for important IP milestones and ensure that appropriate protections are in place.

By contrast, agile software development, which favors aggressively quick development periods, makes such planning difficult for intellectual property counsel. Instead of one stage flowing down to the next, like stairs or a waterfall, agile software development is characterized by cross-functional teams that may test, design, and code in overlapping periods of time. These bursts of productivity are often not rigid or well-defined, and as such, the product is expected to be released multiple times in order to elicit internal and external feedback as a means to improvement. Further compounding the complexity is the fact that agile software development may be defined differently from company to company.

Most proponents do agree, however, that the underlying feature of agile software development is iteration. When a software development team delivers their software, each iteration may be defined by four stages: 1) planning; 2) development; 3) feedback/user review; and 4) retrospection.  In contrast to traditional approaches, agile software’s “development” phase combines the coding and testing phase of the traditional software approach in order speed up the process. Software projects are released for early review, and multiple releases may be expected in order for the developers to receive meaningful user review and feedback in order to complete, improve, and polish the final software product. As such, in the last phase, the retrospective phase, the development team will discuss and integrate the reviews and feedback before deploying the final product.

Because agile software development favors such a rapid evolution of software development, intellectual property attorneys may often be cut out of the equation in favor of quick deadlines and high-pressure milestones. Even when they are involved in the project, such rapid evolution may leave counsel operating on outdated information. Likewise, because such development phases are often highly segmented, and development teams may be intensely focused on meeting milestones, intellectual property counsel may not be properly advised on potentially protectable intellectual property.

Patent Protection

Moreover, with the 2014 Supreme Court holding of Alice v. CLS Bank, the pursuit of software patent protection has become significantly more difficult. Pre-Alice, intellectual property attorneys could pursue patent protection for software if the patent claims applied the claimed abstract ideas in some sort of concrete application. Now, however, counsel must advise software teams about Alice’s two-step test. The first step requires an evaluation of whether or not the claim involves an abstract idea or principle. The second step then asks whether protection is claimed for an additional concept or innovation, instead of mere computer implementation of the abstract idea or principle as previously allowed.

As such, some studies have stated that over half of challenged patents have now been invalidated, with some appeals courts invaliding over 95% of the challenged patents brought before it. As such, intellectual property counsel should look to other aspects of intellectual property law to bolster their client’s protections. Using a combination of other protections offered under other intellectual property law can be used to great effect.

Trade Secret Protection

For example, intellectual property counsel should pursue trade secret protection when available. Under new law, trade secret protection is more of a reality. As long as the software development team can successfully argue or demonstrate that the software code, design, or product has independent economic value that is specifically derived from its confidential nature and not being known to the public, it may potentially enjoy trade secret protection. As always, if clients indeed have property worthy of trade secret protection, intellectual property counsel is essential in advising clients on how to maintain the confidentiality of such information. In order to do so, the software development team must install and maintain special data protection protocols. More specifically, the company must have data protection policies that can meet trade secret law requirements. Successful data protection policies should determine whether the subject of the protection is already known, whether the subject can indeed be kept confidential from end-users, and whether access to the subject can be successfully controlled and policed. In order to properly protect the trade secret, intellectual property counsel advise clients on how to maintain the trade secret’s confidentiality by keeping it separate from its non-confidential counterparts. Counsel should also advise the client on how to educate company personnel in maintaining confidentiality within the company and with external users. Legal teams should also ensure that proper legal clauses and agreements are in place to protect confidentiality, proprietary information, and nondisclosure of intellectual property. Lastly, legal teams should also continually update and review relevant documents, protocols, and internal procedures to ensure that the company consistently complies with its own data protection policy.

Copyright Protection

Intellectual property attorneys may also use copyright law and registration as another means of protection for software development. Attorneys should ensure that stringent copyright notices are included in appropriate places and are clearly visible when necessary. Copyright notices may be included in areas such as the source code, graphical user interfaces, and overall design aspects of the project. Attorneys should be kept abreast of new iterations, updating, and any re-releases of code or software in order to advise clients of whether official federal registration of the software code is viable or advisable.

Non-Disclosure Agreements

Lastly, intellectual property counsel should ensure that intellectual property nondisclosure agreements and clauses are used. Because the agile software development as a process relies on the solicitation of both internal and external reviews and feedback, it is important for intellectual property attorneys to have well-drafted nondisclosure agreements in place. Beyond including thoughtful clauses regarding confidentiality and ownership of proprietary information, well-drafted nondisclosure agreements should include specific “feedback clauses” that explicitly state that feedback and reviews are freely given to the client without expectation of payment, royalties, or any exchange of similar consideration.

Using a combination of other aspects of intellectual property law, counsel can attempt to provide encompassing protection of software development projects even in the face of challenges posed from agile software development approaches and post-Alice considerations.

For more information on this topic, please visit our Software-Related Services page, which is part of our Software & Copyrights practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the software and copyrights law firm and its software attorneys can be found at www.klemchuk.com.

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.

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