Is Software Patentable? Not Always. Here’s Why.

justice statue with sword and scale. cloudy sky in the background

Lady Justice protecting your software patents.

The question of the century? Or of the millennium? Definitely a question the USPTO (United States Patent and Trademark Office) and U.S. Supreme Court have been struggling with since the term “software” was coined. In 2014, arguments were heard by the Supreme Court in the case of Alice Corp. vs. CLS Bank International. The case has created a lot of confusion in the software patent world, resulting in the question ‘is software patentable?’

That’s up to the USPTO now, which interprets the court’s rulings and sets rules and guidelines based on that interpretation. To answer this the USPTO issued updated patent application examination guidelines on December 15, 2014. Now, as the USPTO solved the issues or caused more confusion?

Previous Supreme Court rulings have stated that anything under the sun is patentable. This includes process, machine, and composition of matter or an article of manufacture. Non-patentable subject matter includes three judicially created exceptions:
1) Laws of nature
2) Natural phenomenon and
3) Abstract ideas

According to the Alice Corp. decision, any patent that falls under these three judicially created exceptions can still be patentable if and only if it now involves something significantly more than the judicially created exception. In the case of software or a business method patent, most are processes – thus potentially patentable. However, many patent examiners have been declaring that software also falls under the non-patentable abstract idea exception and thus may only be declared patentable if and only if the patents claims are significantly more than the underlying abstract idea.

The question arises, “what constitutes significantly more for software covering an abstract idea? The Patent Office’s Guidelines explain:
>> Improvements to the functioning of the computer itself
>> Improvements to another technology or technical field or
>> Adding an unconventional area that confines the patent claim to a particular useful application.

To help explain what this means for businesses, here are some best practices that will assist you in securing a software patent and avoid a rejection by the Patent Office:

1. If your invention is a software version of a human practice, then the patent office will require you to prove something significantly more. Furthermore, if what you are trying to protect can be done by a human using a pen and paper then you will likely need to show something significantly more. If using a computer makes it easier or faster to carry specific steps out, then you will likely have to show something significantly more.

2. If a patent applicant, through their patent attorney, can argue that the underlying invention is NOT an abstract idea, then analyzing whether the patent claim is significantly more than the underlying abstract idea is moot.

3. At a minimum, the routine conventional and well understood functions that your software or process covers will not be eligible for patent protection. It’s the additional features that you will want to protect.

4. If your software or business method process is obvious or lacks an inventive step then there may be some issues in achieving patent registration. It will be incumbent upon you to prove to the patent office that your computer implemented invention solves a technical problem in a novel and non-obvious way.

5. If you created software to work with or run a particular hardware that you designed or created, then that is heading in the right direction of significantly more, and may be found patentable.

6. Lastly, your software or process should exist outside of the Internet. There must be some application of the process to the real world.

The Alice Decision is not the last word on software patents. The Supreme Court and the Patent Office will continue to weigh in on what is patentable subject matter as it pertains to software and business methods. Ultimately when innovating or inventing a solution to a problem that requires software, best to remember that best practice approaches above.

Article by David Postolski
gearhart law

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