Software Patents: The USPTO’s Proposal for Navigating the Post-Alice Waters

Since the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank, patent applicants have been left wondering how far down the rabbit hole goes. The Alice decision left applicants with few guideposts for evaluating whether their software-related inventions were patent eligible. These days, such “subject matter eligibility” challenges are becoming increasingly more common. The ultimate validity of software related patents remains a complicated matter which is difficult to predict with a high degree of certainty. However, over the past year the U.S. Patent and Trademark Office (“USPTO”) has released new guidelines and related examples which increase the likelihood of receiving an issued patent for such software related inventions and provided greater certainty to applicants regarding how their software related inventions are likely to be treated at the USPTO.

Following the Alice decision, the overarching consideration has been, and will likely remain, that the more an invention is tied to improvements in computer hardware or the functionality of the underlying computer itself, the more likely it is to receive favorable treatment. The more an invention is tied only to high-level, conceptual functionality of software, the less likely it is to receive favorable treatment. The “million-dollar question”, of course, is what does one do with all those inventions that fall somewhere in between? The USPTO’s response this year has been largely two-fold.

First, you must better define (and therefore narrow) what constitutes an unpatentable abstract idea. The USPTO has accomplished this by distilling the broad and subjective label of “abstract idea” into three discrete groupings: 1) mathematical concepts; 2) certain methods of organizing human activity; and 3) mental processes. There is also a catch-all exception, but the circumstances under which it may be invoked are relatively narrow. Examples are given for what falls within these groupings and Examiners are required to identify the specific limitations of a claim which they believe cause the claim to fall into one or more of the aforementioned categories.

Second, even when a claim “recites” one of the aforementioned groupings, an Examiner must perform an additional analytical step before potentially declaring a software related claim ineligible. Namely, a claim may be salvaged where the allegedly abstract idea is “integrated into a practical application” of that abstract idea. The USPTO has provided a number of examples of what such integration does and does not look like. At some level, these examples appear to correlate with the breadth of the claim. Higher-level claims are more likely to be viewed as an attempt to monopolize the abstract idea, and narrower claims are more likely to be viewed as providing a real-world solution to a real-world problem. The job of the applicant is often to demonstrate to the Examiner how the claimed invention is analogous to those examples the USPTO has provided as being patent eligible, and dislike those which the USPTO says are not.

Until the Supreme Court or Congress revisits the subject matter eligibility question more definitely, there will always be some uncertainty when pursuing software related patent applications. However, this newly provided guidance at least takes a step in the right direction towards providing applicants with a greater understanding of what is likely, and not likely, to be allowed at the USPTO. Under these new guidelines, it is generally in a patentee’s favor to describe their software invention in significant detail. The existence of, and relationship between, tangible items of equipment (e.g., processors, servers, routers, peripheral devices, etc.) should be shown in figures and described in writing. Flow charts can be very helpful for demonstrating the analytical steps undertaken by the software. Data inputs and outputs should also be described in detail. Throughout the application, applicants should take care to document advantages realized by the new software features as well as any obstacles overcome in adopting the system for software use.

If you have any questions about patent eligible subject matter, contact a patent attorney to seek advice.