Due to the breadth of the claims and their potential to block out entire fields of products, software inventions are being scrutinized by the courts and the US Patent Office. Despite the uncertainty surrounding patent eligibility, numerous SaaS services, programs, games, and other software are being patented and enforced today so the trick is to properly document your application with details on how the invention improves computer performance to avoid classification as an abstract idea. This blog will discuss the factors in patenting software in the US.
Computer-Implemented Invention
Is Software Patentable in the US? The answer depends on the technology and the application. Software inventions that improve computing resources are eligible for patent protection. Those who make this type of software must meet certain requirements in order to qualify for patent protection. Listed below are these requirements. In order to be eligible for patent protection, a software invention must be a computer program that performs at least one of the four essential functions.
A patent application must meet certain requirements to be eligible for protection under the Patent Act. The USPTO can choose to rely on the Patent Act of 1952 or the CAFC’s interpretation of the patentable subject definition. However, if a software application does not meet these requirements, the application is unlikely to receive a patent. Software patentability requires more than routine activities. Moreover, there must be a patentable use for the invention.
Patent eligibility criteria for software are complicated. In recent years, the USPTO has adopted the Alice v. CLS Bank decision. The result has been confusion over the definition of a patent. The Alice case, for example, has resulted in a lot of uncertainty. However, the USPTO’s decision in Mayo v. Prometheus Labs, Inc. has clarified the analysis in favor of software patents.
Patentability of software depends on the writing of the claim. While the application is a technical invention, the patent must address a specific customer pain point and address the needs of the customer. Using a patentable claim is an important part of the process, as it can make your invention more valuable. This article will provide an overview of some important considerations that will help make your software patentable. It’s also important to keep in mind that the software patent will cover the invention, not just the components of it.
In the last decade, the USPTO has stepped in to clear up the confusion surrounding software patents. It appointed Bruce Lehman, a former lobbyist for the Software Publishing Industry, to be Commissioner of the USPTO. Lehman’s appointment to the USPTO followed this precedent. In 1995, the USPTO released broad guidelines for software patents, which interpreted the Federal Circuit’s decisions as requiring software patents in a wide range of cases.
Business Method Software Patenting
A business method patent involves a new way of doing business, for example, Amazon’s “1-Click” button for ordering. In 1999, Amazon was granted a patent on the idea that consumers could enter in their billing, shipping and payment information just once and then simply click a button to buy something. Claim 1 of USPN 5,960,411 reads:
- A method of placing an order for an item comprising: under control of a client system, displaying information identifying the item; and in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system; under control of a single-action ordering component of the server system, receiving the request; retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and generating an order to purchase the requested item for the purchaser identified by the identifier in the received request using the retrieved additional information; and fulfilling the generated order to complete purchase of the item whereby the item is ordered without using a shopping cart ordering model.
This patent represented a breakthrough for the idea of hassle-free online shopping. In late 1999, Amazon sued Barnes & Noble on this patent and the lawsuit was settled in 2002. Since then, Apple licensed the technology for use on its website and the iTunes platform. This patent secured Amazon’s position in the broader retailing sphere and the competition had trouble catching up or gaining a foothold.
Despite incentives from Barnes & Noble, Apple, and numerous other companies to invalidate the patent based on prior art, the patent survived and expired on 9/12/2017. The tale of the 1-click patent illustrates the power of the business method patent. However, since 2000, the courts and the US Patent and Trademark Office (USPTO) have been clamping down on business method patents.
Before filing a business method of software patent application, you must determine whether your invention falls under the scope of the US patent laws. In order to qualify, the method must be novel, which means that it is not already well-known in the market. It also must be not-obvious, which means that anyone with ordinary technical ability cannot think of it. This requirement is particularly important for methods developed on the Internet, because they will fail the novelty test if they have been published, sold, or put into public use.
While Supreme Court precedent had barred the patenting of abstract ideas and mathematical algorithms, the lower courts have enforced patents with a practical application of a mathematical algorithm. Further, due to the industry comments on the 1-click patent, the examiners in the business method art units are famous for rejecting applications so you should strive to draft your application to avoid being assigned to the business method art unit to improve your odds of getting a patent.
Today, the patent office evaluation of business method of software patentability analysis involves a series of steps. The first step involves determining whether the claimed invention is directed to an abstract idea, which is anything that is not a tangible product or process. The fact that the abstract idea can be implemented using a computer does not provide an escape path from the patent eligibility test. The second step involves determining whether the invention is directed at specific aspects (specificity) of the abstract idea using a particular implementation technique or technology. Factors that may help shift the invention from being abstract into patent eligible subject matter involves determining whether the software improves the functionality of the computer or improves the result thereof.
Requirements for Software Patenting
To obtain a patent, an applicant must describe his or her invention in detail, in accordance with the standards laid down by the United States Patent and Trademark Office. The disclosure must include enough details to enable a skilled person in the art (PHOSITA) to practice the invention. It must also describe at least one implementation of the invention, including the most preferred embodiment. This may be followed by a section called the industrial applicability, which describes the likely uses of the invention, such as in the manufacturing industry.
Patentability is determined by four factors, which are reviewed by the USPTO. In general, raw products do not qualify as patentable unless they are altered or converted into new forms. Criticism from the public has sparked ongoing debate in the field. In some cases, however, a non-technical invention may be patentable if it involves a method of making or using a product.
In order to be patentable, a software invention must be invented by a human being. Thus, a computer running AI software is not yet accepted for inventorship. Further, the invention must be original, useful, and non-obvious. In addition, the claim must state the exact use of the invention.
A patent examiner will evaluate each claim to determine whether the innovation is patentable. The examiner will consider whether the invention is novel or obvious based on the language used in the claim. For software applications, the examiner will also apply guidance on patent eligibility by the USPTO providing more clarity on the definition of abstract ideas under Section 101.
What is an Abstract Idea?
Despite numerous cases, the courts have failed to provide the legal definition of “abstract idea”. In Interval Licensing LLC v. AOL, Inc., Judge Plager of the Federal Circuit wrote, “a search for a definition of ‘abstract ideas’ in the cases on § 101 from the Supreme Court, as well as from this court, reveals that there is no single, succinct, usable definition anywhere available.” The U.S. Patent and Trademark Office (USPTO) recently published patent eligibility examination guidance that defined three classes of abstract idea as: mental processes, mathematical concepts, and methods of organizing human activity. See Step 2B in the PTO’s subject matter eligibility test below:
The first step in ensuring that your software is patent-eligible is examining its subject matter. According to step 2A, if you have an idea that isn’t abstract, you might be able to bypass this hurdle. If not, there are additional elements to consider before determining whether your software is patent-eligible.
Often, a software program is a mathematical formula that caused it to be placed in the abstract idea bin. But in some cases, it is more than just a mathematical formula. For example, a software program that converts binary-coded decimal numbers into true binary numbers in a way that speeds up computer performance can be transformed into patent-eligible subject matter.
In one example of abstract idea, in Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014) invalidated U.S. Patent No. 6,398,646. The claim is directed to an abstract idea and has additional computer elements that do not amount to significantly more than the abstract idea. The invention relates to an automated Bingo system having the ability to print sets of numbers on tickets on site. The system uses a computer to print the tickets, track the sale of the tickets and to validate winning tickets. The computer stores the specific sets of Bingo numbers for a player and prints the tickets having the player’s specific set of Bingo numbers to enable the player to play his specific Bingo numbers for various sessions of Bingo. The automated system allows for managing all aspects of a Bingo game, including solving tampering problems and minimizing other security risks during Bingo ticket purchases.
While the definition of “abstract idea” may be fuzzy, if your invention is seen to be an abstract idea, the USPTO and courts are clear: an abstract idea is not patentable in the US, so you want to avoid presenting your invention as an abstract idea.
Abstract Ideas With External Hardware
The practice of patenting abstract ideas with external hardware is nothing new. In the past, the concept of remote access to information has been used for decades. However, patent claims are generally recited as generic computer implementations of an abstract idea. In this case, the patent claims concerned a system for offering media in exchange for viewing an advertisement, an abstract idea. This is because it can be accomplished by any general purpose computer.
Tricks to Meet the Patent-Eligible Subject Matter Test
Even if your invention is placed into the abstract idea bin, all is not lost. You can use revised step 2A analysis to incorporate additional elements that integrate the “judicial exception” of patentability into a practical application. This is where details in the description becomes important.
Your description should focus on the following:
- Improvement to the functioning of a computer or to any other technology or technical field per MPEP 2106.04d1 and 2106.05a
- Applying the exception with, or by use of, a particular machine per MPEP 206.05b
- Effection a transformation or reduction of a particular article to a different state or thing per MPEP 2106.05c
- Applying or using the exception in a meaningful way per MPEP 2106.05e
Despite the Alice-inspired uncertainty, the specter still haunts software patent applicants. In the wake of Alice Corp. v. CLS Bank International, the USPTO issued complicated guidelines for examiners that make overcoming subject matter eligibility rejections in software patent applications difficult. Even after four years of Alice, the patent landscape for software remains unclear and many stakeholders are scrambling to apply the new rules.
Conclusion
Patent eligibility for software is a hotly debated topic. Whether your software is patented is a very complex question. In the past, the answer was easy: yes. But with theAlice v. CLS Bank decision, there are still inconsistencies and confusion about what constitutes a patentable idea. However, with the right patent drafting skills, we can give your software innovation the best chance of being patented.
Unlike in the past, business methods are protected under patent law. The process is complicated, and the applicant needs to ensure that the method is feasible and produces useful results. Patent attorneys can help protect your intellectual property. It takes about two years to get a business method patent. There are several fees associated with the process, including the USPTO’s fees. However, it is still worth it to retain the services of a patent attorney.
