Introduction
Drafting software patents requires methodical discipline in the post-Alice world. To read about more about the subject, consider our previous post: how to patent software in the US. Here, we address three useful tips that would reduce the chances of receiving a 35 USC 101 subject matter eligibility abstract rejection, the so-called “Alice rejection.” A few software patent examples are also presented.
As addressed in the previous blog post, the subject matter eligibility framework utilized by the USPTO comes from the US Supreme Court’s decision in Alice Corp. v. CLS Bank International (2014), which determines:
- Step a: Is the software invention about an abstract idea, such as a math formula, a way of organizing people, a basic business practice, or an idea itself?
- Step b: If yes, does the software invention have an inventive concept, such as a technical improvement, a specific implementation, or a non-generic computer application, that makes the abstract idea into a patent-eligible invention?
✅ If the answer to step a is no, then the software invention can be patented.
❌ If the answer to step a is yes and step b is no, then the software invention cannot be patented.
✅ If the answer to step a is yes, and the answer to step b is yes, then the software invention might be patentable.
Examples of Software Patents
Here are some examples of software patents that have been accepted or rejected by the courts under the Alice framework:
- Accepted: U.S. Patent No. 8,266,432, which claims a way and a system for finding fraud in online transactions using changing IP addresses. The court said that this invention was not about an abstract idea, but about a real problem and solution in e-commerce security.
- Accepted: U.S. Patent No. 7,774,911, which claims a way and a system for making a web page that mixes visual elements from different sources. The court said that this invention was not about an abstract idea, but about a specific way of making web browsers better and more user-friendly.
- Rejected: U.S. Patent No. 5,970,479, which claims a way and a system for running a game of bingo. The court said that this invention was about an abstract idea of organizing human activity, and that it did not have any inventive concept besides using common computer parts.
- Rejected: U.S. Patent No. 6,912,510, which claims a way and a system for making and trading encrypted digital tokens. The court said that this invention was about an abstract idea of settling payments, and that it did not have any inventive concept besides using normal cryptography and computer networks.
Tips for Writing Software Patent Applications
Given the difficulties and uncertainties of software patenting in the U.S., it is important to follow some tips when writing software patent applications, such as:
- Identify the problem and the solution: Software patent applications should clearly describe the technical problem that the invention solves, and how the invention provides a new and original solution that is different from the prior art. This can help show the patentability and the value of the software invention.
- Avoid general and abstract language: Nothing happens magically. Software patent applications should avoid using unclear, general, or abstract language and terms that can be understood in different ways by the USPTO or the courts. Instead, software patent applications should use clear, specific, and technical language and terms that say what the software invention does and how it does it.
- Provide detailed examples and diagrams: Software patent applications should provide detailed examples and diagrams that show how the software invention works in real life, and how it connects with other parts or systems. This can help show the enablement and description of the software invention, and also help with making changes or arguments during prosecution or litigation.
Conclusion
Software patents are a good way of protecting your software inventions, but they are also hard to procure. To do so, you need to know the requirements and the challenges of software patentability, and attempt to follow the tips presented above. Seeking the advice of a good patent lawyer who specializes in software related inventions is highly encouraged.