Software Patents
Though Attitudes Towards Software Patents Keep Changing, Software Patents Are Here to Stay.
When I first started practicing patent law, it was very difficult to obtain patent protection for software related inventions; patent applications covering software related inventions were typically rejected as “unstatutory.” Then we went though a period when not only was software capable of being patented, many business methods and financial methods capable of being patented as well. More recently, the Supreme Court in a case called Alice v. CLS has caused great confusion about when and whether software, let alone business methods and financial methods, can be patented. Although Alice v CLS dealt with a very narrow issue concerning automation, using a computer, of a well known financial method, the lower courts have been wrestling to interpret how the Supreme Court’s decision affects software patents and business method patents. Some patent office examiners mistakenly assume all software is now not patent eligible. This is not the case, as many post-Alice decisions from the Federal Circuit have shown.
Are Software Patents Dead after Alice v. CLS?
After Alice, some judges and patent office examiners believe that software was no longer capable of being patented. However, that is not what the Supreme Court said in Alice v. CLS. In Alice v. CLS, the Supreme Court laid out a two step process for determining whether software (if new, useful, and non-obvious), is eligible for patent protection. The first step is to determine whether the claims at issue are directed to a patent-ineligible abstract idea. If so, the second step is to consider the elements of each claim—both individually and as an ordered combination—to determine whether the additional elements transform the nature of the claim into a patent-eligible application of that abstract idea. This second step is the search for an “inventive concept,” or some element or combination of elements sufficient to ensure that the claim in practice amounts to “significantly more” than a patent on an ineligible concept. Unfortunately, the Supreme Court did not provide much definition of what is “Abstract” and what is “significantly more.”
Various cases were appealed to the Court of Appeals for the Federal Circuit, the highest court in the land other than the Supreme Court for hearing patent cases. The Federal Circuit has found many software related inventions to be statutory, and capable of patent protection. The Patent Office and Federal Circuit are most likely to find a software invention to be patent-eligible if there is some novel hardware other than the computer itself or if the functioning of the computer is improved. That is the strongest position to be in. However, not all software improves the functioning of a computer. Other decisions have found inventions to be patent-eligible even if functioning of the computer is not improved.
Is it Still Possible to Obtain Software Patent Today?
Various post-Alice decisions by the Federal Circuit have found software to be patent-eligible.
One such decision is DDR Holdings, LLC v. Hotels.com. In DDR v. Hotels.com, the Federal Circuit considered software for a method of providing advertising on a web page. The court noted that the claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. This was more than automating a well known method using a computer. Therefore, if your software solves a problem that did not exist before the Internet, DDR v. Hotels.com can be cited to an examiner if a rejection is received after a patent application is filed.
Another often cited post-Alice decision is Enfish v. Microsoft, in which software was again found to be patent-eligible. The invention in this case related to a logical model for a computer database. A logical model is a model of data for a computer database explaining how the various elements of information are related to one another. A logical model generally results in the creation of particular tables of data, but it does not describe how the bits and bytes of those tables are arranged in physical memory devices. Contrary to conventional logical models, the patented logical model includes all data entities in a single table, with column definitions provided by rows in that same table. The patents describe this as a “self-referential” property of the database.
The Federal Circuit noted that the Supreme Court has not established a definitive rule to determine what constitutes an “abstract idea” sufficient to satisfy the first step of the Mayo/Alice inquiry. Rather, both the Federal Circuit and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.
Refreshingly, the Federal Circuit in Enfish stated that: “We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like.
The Federal Circuit concluded that in Enfish, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. Therefore, the patent was patent-eligible and it was not necessary to proceed to step two of the analysis.
Thus, it is still possible to obtain software patents after Alice v. CLS.
I have reviewed a large number of cases from the Federal Circuit, the highest court for patent matters other than the Supreme Court. I have summarized many of these cases for you in my blog. If you have a software invention, you should review them to get a feel of when it is possible to obtain a valid software patent. As a high level summary, software inventions that improve the functioning of a computer, are generally patent-eligible. Beyond that, if the invention is technological in nature, if the specification describes something that sounds complicated, the patent is more likely to be found to be patent-eligible by the U.S. Patent and Trademark Office, as well as by the courts. On the other hand, if the claimed software invention is more of a desired result or business method, it is more likely to not be patent-eligible.
Should I use Software Patents or Copyright?
Some companies rely solely on copyright protection to protect their software. Unfortunately, copyright protection is very weak and can easily be defeated.
During the evolution of the law on software inventions, case law eroded the value of copyright protection of software. In addition to the fact that copyright protection does not prevent against independent invention, but requires copying, menu structures have been held to be not capable of copyright protection in an important case between Lotus and Borland.
When asked to compare the difference between copyright and patent protection for his PC spreadsheet program, the inventor of Visi Calc was quoted to state “With a patent the only difference would have been several hundred million dollars.”
Can I Get a Patent for My Software Invention?
Procedural and substantive conditions for patent grants vary from one country/region to another. For instance, in some countries in Europe, inventions inside the meaning of patent law must have a “technical effect” and software patents are not possible unless there is a hardware improvement. Since Alice v. CLS, U.S., the U.S. has shifted towards this sort of thinking.
It’s recommended that you consult a knowledgeable patent attorney such as Deepak Malhotra, who specializes in intellectual property, to discuss your particular situation.
Are you interested in the history of software patents? I prepared a history of selected important cases relating to the patenting of software related inventions where these cases are discussed in more detail: https://www.patentsusa.com/blog/ (a new window will open).
Are Software Patents Expensive?
Software patent applications are typically more complex than patent applications covering mechanical inventions.
Because software inventions are more complex than mechanical inventions, they are obviously more expensive to prepare. If desired, the actual computer code can be included in the application, or appended as a microfilm. The more information that is included, the more likely the application will be valid, but more trade secrets will be lost. If the source code will be generally available, and not kept as a trade secret, it may be advisable to include a microfilm of the code. Otherwise, source code is typically not disclosed in a patent application.
If you require a software patent attorney, please
contact Deepak Malhotra