Every week, I get some version of the same questions from founders and engineers building software and AI products. Most of them are surprised to learn the answer. Here’s what I tell them.
Is my software even patentable, or is that just for hardware?
This is the question I hear most often, usually from someone who assumes patents are for physical inventions only.
Software may be patentable. So can AI-driven systems. The answer depends on what the invention actually does, not on whether it runs on a screen instead of a factory floor.
What matters is the technical problem being solved and how the solution works. Under 35 U.S.C. § 101, patent protection is available for any new and useful process, machine, manufacture, or composition of matter.35 USCS § 101. However, the Supreme Court has held that abstract ideas, laws of nature, and natural phenomena are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 212 (2014). Software and AI inventions must do more than implement an abstract idea on a computer they must contain an “inventive concept” that transforms the abstract idea into a patent-eligible application.Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012). A patent examiner isn’t looking at “is this AI” or “is this software.” They’re looking at whether you’ve built something new and non-obvious that solves a real technical problem in a specific way.
I spent years working on mechanical and electromechanical inventions, things like automated packaging systems and consumer electronics. The discipline is the same when I look at a software process: what’s the architecture, what’s the workflow, and what’s different from what already exists. That analysis doesn’t change because the invention runs in code instead of steel.
We used an existing AI model. Does that mean we can’t protect anything?
No, and this is a common misunderstanding. Using an existing AI model, whether that’s a foundation model, an open-source framework, or a licensed tool, doesn’t disqualify you from protection. The AI itself usually isn’t the point. What matters is what you built on top of it.
Did you create a new way of processing data? A new architecture for how the system makes decisions? A new application that solves a problem nobody had solved that way before? The patent analysis focuses on whether your specific contribution the method, system, or process you created is new and non-obvious, not on whether you used existing tools as building blocks. 35 USCS § 102, 35 USCS § 103.
Whether that holds up depends on the specific technical details of what you built, and that’s a fact-specific conversation, not a blanket rule.
My engineer built this. Does the company own it or does he?
This question should come up before the code is written, not after. Unfortunately, it usually comes up after.
Ownership of software and AI inventions typically depends on what’s documented in the employment or contractor agreement at the time the work was done. For copyright purposes, the default rule is that the person who creates a work owns it unless there is a written agreement transferring ownership. 17 USCS § 201. For employees, work created within the scope of employment is generally owned by the employer as a “work made for hire.” 17 USCS § 101, Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 732 (1989). For independent contractors, work-for-hire status requires specific conditions and a signed writing; without an assignment agreement, the contractor may retain ownership. Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 732 (1989), Nationwide Mut. Ins. Co. v. Darden, 503 U.S. 318, 323 (1992).
For patent rights, inventorship is a question of who conceived the invention, and ownership follows from there unless the inventor has assigned rights to the company. 35 USCS § 115, 35 USCS § 116. If there’s no assignment clause, or if the person who built it was a contractor rather than an employee, the answer isn’t automatic.
This is one of those situations where the general principle is easy to state and the application is not: whether your company owns what was built depends heavily on how the relationship was documented before the work started. If you’re not sure what your agreements say, that’s worth checking now, not during due diligence for a funding round or acquisition.
We’re moving fast. Won’t a patent process just slow us down?
I understand the instinct. Speed feels like the priority when you’re building and shipping.
But the question isn’t really about speed. It’s about what happens if a competitor files first, or if you disclose your invention publicly before protecting it. Patent rights can depend on timing, and once certain disclosures happen, options can close. Under 35 U.S.C. § 102(a), prior public disclosure or sale of an invention before the effective filing date can bar patentability. 35 USCS § 102.
The filing process itself doesn’t have to interrupt your product roadmap. It runs in parallel. The real cost of waiting isn’t the process, it’s what you might lose the right to protect while you wait.
Do I need to patent everything we build?
No. Not every feature, workflow, or internal tool needs a patent application. Some innovations are better protected as trade secrets. Some aren’t valuable enough to justify the investment. Some are variations on things that already exist.
The useful exercise isn’t “patent everything.” It’s identifying which parts of what you’ve built are actually new, and actually matter to your competitive position or your company’s value to an investor or acquirer. That’s a conversation, not a checklist.
Nobody told us any of this when we started building.
That’s the pattern I see most. Founders and engineers building genuinely new things software platforms, internal tools, AI-driven features without ever stopping to ask whether what they built is protectable. It’s not because they didn’t care. It’s because nobody raised the question at the right time.
If you’re building something new right now, whether it’s customer-facing or an internal system nobody outside your company will ever see, it’s worth a conversation before you’ve made decisions that limit your options later.
What questions have come up in your own work that you’d want answered here? Drop them below and I’ll consider them for a future piece.The Garcia-Zamor Law Firm. We’re the general counsel and fractional general counsel for businesses and high-end innovators, protecting both your business operations and your intellectual property. Ruy Garcia-Zamor (founder with 25+ years experience in patents, trademarks, intellectual property, and business strategies, and a registered patent attorney with the U.S. Patent and Trademark Office), Elliott Alderman (40+ years experience in intellectual property and providing guidance to businesses), Claudia Castillo (decades of experience in business law focusing on all employment issues), and Amulya Annasamudram (focuses on patents and intellectual property and is a registered patent attorney with the U.S. Patent and Trademark Office). Contact us at garcia-zamor.com or (410) 531-9853
