U.S. Patents for Software Features

To receive a patent under U.S. Patent Law, an invention (as expressed in patent claims) must be adequately described in writing, novel and nonobvious, and set forth particular “patent eligible” subject matter.  In the area of patent eligible subject matter, much has evolved since the U.S. Supreme Court’s decision in the 2014 Alice case in which certain judicial exceptions to patent eligible subject matter (e.g., so-called “abstract ideas”) were emphasized.  In preparing and prosecuting patent applications before the U.S. Patent and Trademark Office (USPTO), our patent attorneys and agents have a long track record of avoiding the Alice trap to provide our clients with patents directed to software inventions.    

While Congress has set forth a standard for patentable subject matter under 35 USC § 101, the U.S. Supreme Court in Alice sets forth a two-step process to determine whether a “judicial exception” to the statute is to be applied to a patent claim.  In a first step, a court or USPTO is to determine whether the patent claim is directed to a judicial exception.  If the claim is determined to be directed to a judicial exception, in a second step the court or USPTO is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.

To guide patent applicants in addressing the first step in the two-step process set forth in Alice, the USPTO has set forth a two-prong test including determining whether a patent claim recites a judicial exception and, if so, determining whether the patent claim includes additional elements that integrates the recited judicial exception into a practical application.  If the recited judicial exception is determined to be not integrated into a practical application, the USPTO is to determine whether the patent claim includes an “inventive concept” for the second step in the two-step process set forth in Alice.

In applying the two-step process set forth in Alice, the U.S. Court of Appeals for the Federal Circuit (CAFC) has typically focused on determining whether a claim sets forth an “improvement in technology.”  The CAFC has determined that generic computer components to implement a judicial exception (e.g., abstract idea) does not satisfy the Alice standard.  U.S. patent applicants should be aware that the courts are not bound by the USPTO’s guidance or USPTO decisions, and that to obtain an enforceable patent a U.S. patent applicant should endeavor to meet the guidance set forth by both the USPTO and the CAFC.  In an appeal from the USPTO in CxLoyalty v. Maritz Holding, the CAFC overturned the USPTO’s ruling by determining that an “inventive concept” identified by the USPTO in a claim was “not directed to a technological solution to a technological problem.”  As such, it would appear that the CAFC may be applying a standard not unlike a “technical effect” standard applied by European courts.   

Thus, to improve chances of obtaining enforceable claims in a granted patent, a U.S. patent application should include discuss one or more problems as being technical in nature, and how a combination of features provides one or more embodiments as a technological solution to the one or more problems.  Multiple embodiments should also be described.

Federal Courts and the U.S. Patent Office have also been active in further defining the requirements of written description support for patent applications directed to software inventions.  With input from you and your team, our seasoned software patent attorneys and agents can capture algorithmic details and specialty hardware details to meet the requirements of written description, and enable a broad enforceable claim scope.    

We understand that patents are a major investment, and we want to help you protect that investment with our deep expertise in this particular area of patent law.  You’ve put in the hard work of developing the software, so let us help you retain proper rights to it.  We can assist you regardless of what stage you are at in the patent process.

us today to arrange a consultation and learn more about how we can help.

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