Software Considerations Post-Alice

November 2016

By: Nathan Harris 

Since the Supreme Court’s 2014 decision in Alice v. CLS Bank International et al, courts and the United States Patent & Trademark Office (USPTO) have struggled to determine what is an “abstract idea,” and what is patent-eligible. Over the last several months, however, patent practitioners have received some hope in light of the Federal Circuit’s recent decisions in Enfish v. Microsoft (May 2016), Bascom Global Internet v. AT&T (June 2016), McRO v. Bandai Namco Games (Sept. 2016), and Amdocs (Israel) Ltd. v. Openet Telecom, Inc. (Nov. 2016). Below are ten points to consider when writing and prosecuting patent applications for software-based inventions.

Consider narrowing the claims

Identify the specific field or technology that the invention improves. Means-plus-function drafting may be one way to suitably limit the scope of the claims.

Analogize to subject matter previously found eligible

Last week’s decision in Amdocs emphasized the importance of precedence in the Alice framework. Where possible, drafting claims to be analogous to those found eligible in recent decisions by the Federal Circuit and other courts may offer the clearest route to eligibility.

Include technical information

Explain the technology in as much detail as possible. Include specific algorithms, rules, and system architecture, particularly where they provide an improvement over the prior art. Describe the invention from the perspective of different components and entities, such as a server, a client, and the entire system. Emphasize any concrete, tangible results or transformations, particularly those having a physical effect in the real world.

Tell a compelling story in the specification

The McRO decision demonstrates that it can be useful to clearly explain the drawbacks of conventional methods or existing software-based methods for achieving the same or similar result. Then describe how the claimed invention differs from, and improves upon, that prior art.

Avoid preempting the field

Ensure that your claims cannot be read as an attempt to preempt the entire field of the invention—including the prior art—by reciting specific means or methods for achieving a desired result. Claiming the result itself may be viewed as an abstract idea, since it could encompass all ways of achieving that result.

Highlight improvements to the computer itself

The courts have been clear that improvements to the computer itself are patent-eligible. While that certainly includes such innovations as faster processors, indirect improvements are also eligible. For example, a distributed web filtering that operated more efficiently than a single-location filter was recently found to be a computer-based improvement in Bascom.

. . . or improvements in the technical field 

Improvements to a technical field may also be patent-eligible. For example, a method of producing cell cultures that—unlike most cell cultures—were capable of being frozen multiple times was recently found to be patent-eligible.

Describe hardware implementations

The fact that an invention is implemented on a general purpose computer is not necessarily fatal to patent-eligibility, but it may draw extra scrutiny from the USPTO. Consider describing and claiming a hardware implementation of a software invention, such as an application-specific integrated circuit (ASIC), to highlight the specific technical implementation and reduce the chances of such a rejection.

Frame the technology in a helpful way

Different “art units” of examiners at the USPTO are responsible for patents on different technologies, and some are more likely to issue Section 101 rejections than others. The way the specification and claims are framed will determine to which group the application is assigned. For example, an application claiming “a method for processing video using computer vision techniques” to detect highway conditions may be assigned to a video-processing art unit that is familiar with the eligibility of computer vision techniques. By contrast, an application with claims to a method for “monitoring street traffic”—even if it recites the same techniques—may be assigned to a “business method” group that is more likely to reject the claim for being directed to an abstract idea.

Push back on the USPTO

Recent case law and guidance from the USPTO continues to add to and clarify the burden an Examiner must satisfy in making an adequate Section 101 rejection.  Understand what is required of the Examiner, and push back when the requirements aren’t followed. For example, to find claims ineligible, an Examiner must analogize to abstract ideas previously identified by a court in a precedential opinion. Examiners must also consider all of the claims, not just the independent claims, in determining eligibility. Examiners have also been instructed not to over-simplify the claims when identifying the allegedly abstract idea to which they are directed.

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