PatentNext Summary: Software-related inventions are patentable. Considerations for patenting software-related inventions include:

  1. Whether the patent claims fall into one of the four categories of “inventions patentable” (e.g., “a process”); and
  2. Whether the patent claims recite (or do not recite) a judicial exception (e.g., an “abstract idea”) as described by the U.S. Supreme Court in its often cited “Alice” decision.

The below article provides additional details.

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Software increasingly empowers our everyday lives. From mobile apps implemented on phones and tablets, to “smart” thermostats that regulate household temperatures, to artificial intelligence (AI) based algorithms running on cloud computing platforms, new software-related inventions improve, automate, or change items that devices with which we interact.

But are such software innovations patentable? Yes, software-related inventions are patentable, and this article explores issues to consider when preparing software-related patents.

Software-related Inventions fit into 3 of 4 of the Statutory Categories of Patent Inventions

Under U.S. law, all patent inventions must fall within into one of the four categories. See 35 U.S. Code § 101 (“Inventions patentable”). Typically, software-related patents fit into three of the four categories:

  1. a “process” (e.g., a software algorithm);
  2. a “machine” (e.g., a device or system executing a software algorithm); and
  3. an article of manufacture (e.g., software stored on a computer memory (RAM or ROM)) (otherwise known as a computer-readable medium (CRM) claim or Beauregard type claim – In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995))

The U.S. Supreme Court’s “Alice” decision adds additional considerations

In 2014, the U.S. Supreme Court, in its Alice Corp. v. CLS Bank International decision, provided additional considerations for software-related inventions. In particular, the U.S. Supreme Court warned that software inventions directed to mere “abstract ideas” are not “patent-eligible” (i.e., cannot be patented). What is an “abstract idea” exactly? Unfortunately, the Supreme Court did not provide a bright-line test, and lower U.S. courts continue to grapple with the definition. The Supreme Court, in Alice, did provide a general test: we know that it is not enough to claim a generic computer with an overbroad idea. In the words of the Supreme Court: “[s]tating an abstract idea while adding the words ‘apply it [with a computer]’ is not enough for patent eligibility.”

After-math of Alice and Best Practice for Claiming Software-related Inventions

Since the Alice decision, however, the Federal Circuit, a specialized court that reviews all patent-related appeals in the U.S., has routinely found software-related inventions patentable. For example, post-Alice, the Federal Circuit stated: “We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract ….” See Enfish, LLC v. Microsoft Corp. et al., 822 F.3d 1327 (Fed. Cir. May 12, 2016) (refusing to create “a categorical ban on software patents”).

A review of Federal Circuit decisions reveals that a best practice to demonstrate patent-eligibility is to focus on how a software-related invention provides a “specific improvement” over the “prior art” (i.e., existing technology). Such a strategy includes the following:

  1. Describe an improvement in the patent specification
  2. Distinguish the improvement from the prior art
  3. Recite the improvement in the patent claims

The Federal Circuit has routinely found patents as eligible that use this strategy. See Core Wireless v. LG Electronics, 880 F.3d 1356 (Fed. Cir. Jan. 25, 2019) (analyzing an invention directed to a graphic user interface (GUI) software invention and identifying a pattern for “improvement” based patents, stating that:“[l]ike the improved systems claimed in Enfish, Thales, Visual Memory, and Finjan, these claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.”).

For additional examples of cases finding software-related inventions patentable, see this post: How to Patent Software Inventions: Show an “Improvement”