Back on Track – Guidelines for Obtaining Software Patents in 2017 in view of Alice

Technical innovations can make or break a leader in a particular market.  Most modern innovations related to computers have pertained to software.  To capitalize on software innovations, companies often rely on software patents to prevent competitor knock-offs, ward off law suits, and attract investment.  The US Supreme Court’s 2014 Alice decision, however, turned software patents upside down – instigating a huge rise in software patent invalidations.  Nearly four years later, the wheels are at least partially back on track with a few guidelines that can help navigate a path to obtaining a solid software patent.


The test – when is software patentable?


Alice Corp. V. CLS Bank Int’l was a Supreme Court case that addressed the patentability of software.  In that case, the Supreme Court formulated a two-part test for software patentability. First, are the claims of the patent directed to a “judicial exception” to patent eligibility (law of nature, physical phenomena, and abstract ideas).  Second, if directed to an exception such as an abstract idea, does the claim include an element that amounts to “significantly more” than the ineligible concept.  With respect to software patents, the test comes in to play when software claims cover an abstract idea without reciting significantly more.


Abstract idea and “significantly more”


When is a claim in a software patent application directed to an abstract idea?  According to United States Patent Office Guidance (2014 interim guidance on patent subject matter eligibility), software patent claims directed to carrying human activities by a computer, mathematical formula, and implementing well known and economic and financial practices by a computer are abstract ideas and not subject matter eligible.  So, for example, Einstein would not have been able to protect his E=mc2 formula in and of itself.

Perhaps a better question to ask – when is a claim in a software patent not directed to an abstract idea?  A few cases provide us with some guidance.  In DDR Holdings, LLC v., the US Court of Appeals for the Federal Circuit (CAFC) found software patent claims directed to a web service and web pages were directed to patentable subject matter, noting that software can be patent-eligible if it is “necessarily rooted in computer technology,” such as the Internet, to overcome a business challenge particular to a computer technology.

In Enfish, LLC v. Microsoft, Inc., the CAFC held that claims were directed to database technology involving a self-referential logical model were directed to patentable subject matter.  The court held that software can be patent-eligible if directed to a specific asserted improvement in the way a computer operates.

In McRo v. Bondai Namco Games America, the CAFC found that software claims directed to automated lip-synchronization and facial expressions were patentable subject matter, noting that software can be patent-eligible if the automated process differs from the prior art process (e.g., manual process), and the differentiating automated process improves the technology.

So now we have the guidelines as to what software innovations can be patent eligible.  Now what?


Moving forward with protecting software innovations


Software is indeed patentable, with recent case law requiring a software innovation be rooted in computer technology, improving computer operation, or modifying an automated process.  With these guidelines from the Federal Circuit, software innovations can be analyzed to determine where they fall on the subject matter eligibility scale.  If a software innovation can be aligned with one of the case law guidelines, the application should be drafted to highlight that fact.  Similarly, when dealing with the USPTO over a subject matter eligibility rejection of a pending software claim, the applicant should attempt to craft arguments that tie the software claims to one of the Federal Circuit guidelines.  Though the rules may change again, these practice guidelines can help companies protect their software innovations in the Alice landscape.