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5 Tips For Getting Software Patents Approved Post-Alice

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The U.S. Supreme Court’s Alice Corp. decision barring patents on computer-implemented abstract ideas made it tougher to obtain patent protection for software inventions, but it is not impossible, attorneys say.

The high court’s June ruling invalidated Alice Corp.’s patents on a computerized method of reducing risk in financial trading, holding that an abstract idea or other “building blocks of human ingenuity” do not become eligible for a patent under Section 101 of the Patent Act simply by being implemented using a general-purpose computer.

The court gave some guidance on how computer-related patents can be written so they don’t run afoul of that standard, but it will likely take several years of lower courts applying the ruling to specific patents before it becomes clear what is and is not patent-eligible in the realm of computer inventions, said Robert Sachs of Fenwick & West LLP.

“There are all these things that one can recommend, but we won’t know for quite a long time how courts will respond, and my guess is that courts will be highly inconsistent in their treatment of patent application in the software-related arts,” he said, calling the current environment “the storm before the calm.”

While the landscape is unsettled, these strategies will give applicants the best shot at securing patent protection from the U.S. Patent and Trademark Office for software-related inventions.

Here are tips that can boost the chances that a software patent will be approved:

Get Technical

The Alice Corp. decision reflects the Supreme Court’s concern that patents on ways of using a computer to execute a fundamental practice or other abstract ideas can effectively prevent others from using those ideas. To avoid falling into that trap, inventors should ramp up the amount of technical detail in their patent applications, attorneys say.

“You need to claim a particular way of doing something on a computer, not every way of doing it with a computer,” Sachs said.

The Supreme Court made clear that patents involving improvements in computer technology remain patent-eligible. Software patent applications that describe ways the claimed invention makes the computer run better, such as using less memory or reducing network consumption, are more likely to be granted than those that just use a computer to perform an existing process more efficiently.

Judd Hollas, CEO of EquityNet LLC, which has been issued two patents on crowdfunding technology by the USPTO since the Alice ruling, said that applicants should ask themselves, “Can I read these claims and visualize an actual working machine?” If the answer is yes, the application has a better chance of being approved, he said.

“You really have to describe an integrated machine with multiple components working together,” he said.

Narrow the Claims

Patent applicants have a tendency to write patents as broadly as possible to secure the greatest possible protection, but that practice “needs to be revisited a bit in the Alice context,” according to Baldassare Vinti of Proskauer Rose LLP.

The Supreme Court clearly takes a dim view of computer-related patents written with a high level of generality, so applicants are well-advised to narrow the scope of what they are claiming, he said.

“You have to start with the breadth of the claims and not get too greedy,” he said.

The USPTO issued guidance to patent examiners on the Alice Corp. ruling soon after the decision came out, which emphasized that patents involving abstract ideas implemented using computers must include elements that claim “significantly more” than the idea itself.

That document can serve as a great starting point for inventors and companies seeking software patents, who should hold regular brainstorming sessions with their attorneys about what the patent office is looking for, said Peg Duncan of McDermott Will & Emery LLP.

“You have to be realistic nowadays. You can’t claim an abstract idea and hope to monopolize it,” she said. “You can’t remove an abstract idea from the public domain no matter how clever the claims are.”

Tell a Compelling Story

Software inventions often involve breakthrough ways of using a computer to do something that people have long wanted to do more efficiently using a computer. Clearly conveying to the patent office the “eureka moment” and the vast amount of work that software engineers put into the invention can be key to securing a patent, attorneys say.

“It is important to include at least some claims that describe the detailed technology that enabled the inventor to finally implement on a computer what previously had evaded computer implementation,” said Matthew Siegal of Stroock & Stroock & Lavan LLP.

Patent attorneys often may not be budgeted to take the time to fully understand the intricacies of how the problem of implementing the claimed process on a computer was achieved, Siegal said. That can lead them to write claims that describe seemingly simple steps that make it look like nothing has really been invented, even when it was complex to implement the steps using computer software.

“You have to go back to patent law basics and put the complexity in the claims,” he said. “I try to focus on what was it that solved this problem that everyone was trying to figure out.”

Such detailed claims may not provide the maximum patent protection, but “if the invention was really patent-worthy, third parties might not be able to copy the invention without copying that detailed technology,” he said.

Play Up the Distinctions Between Man and Machine

The courts have not looked kindly on software inventions that claim something a human being can do in their head or using a pencil and paper, so patent applicants should emphasize the ways in which a computer is integral to the claimed invention, said Erik Paul Belt of McCarter & English LLP.

“What you probably have to do is show that the use of a computer adds something that takes the invention beyond the realm what you can do in your head,” he said. “For instance, performing a million calculations per second is something a computer can do but even a very smart human cannot manage.”

A related strategy would be to include some of the actual computer code in the patent application or to describe specific hardware beyond a standard computer that is necessary to the claimed invention to emphasize how it is more than an abstract idea.

“If you can show that there was a technical problem that you can up with a technical solution to, now you’re telling a better story,” Belt said.

Keep an Eye on the Courts

The Alice decision will be far from the last word on software patent eligibility, and future decisions by the Federal Circuit or the USPTO could significantly change the rules on what is patent-eligible. As a result, attorneys seeking software patents need to keep up with new legal developments and anticipate where the law may be headed.

“You can’t only write for the current case law. You have to think about what might happen two or three years down the road,” said Brett Krueger of Honigman Miller Schwartz and Cohn LLP.

It’s unlikely the Supreme Court or the Federal Circuit will ever rule that software can never be patented, but future rulings could find that certain patent-drafting strategies do not pass muster, attorneys said.

For now, the Alice decision itself and the USPTO’s guidelines provide examples of what not to do, but eventually, there will be more clarity about software inventions that can be patented.

“Everyone is being very conservative now and sticking closely to what the Supreme Court said, but more case law will emerge with examples of things that were found patent-eligible,” Duncan said.

Software patent applicants should be willing to “fight the good fight” if their application is rejected and appeal the decision to the Federal Circuit, Sachs said.

“You have to be prepared to appeal and argue that what you have is not a ‘building block of human ingenuity,'” he said. “Most software patents are nowhere close to that.”

This article was originally published in Law360.