Below is an article by Law360 entitled “5 Tips For Getting Software Patents Approved Post-Alice”
5 Tips For Getting Software Patents Approved Post-Alice
By: Ryan Davis, Law360
Sep 2, 2014
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:
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.
This article was originally published in Law360.