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Software inventions can be patentable and protected under United States patent law. However, one of the major challenges a software patent application will face during examination is whether a claim of the patent recites “patentable subject matter” under United States law. See 35 U.S.C. §101. This article discusses examples of patentable eligible claims for software inventions that the United States Patent and Trademark Office (“USPTO”) has found to be patent eligible.
In 2014, the United States Supreme Court issued an opinion in the case Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 134 S. Ct. 2347 (June 19, 2014) (“Alice”) that appeared to raise the bar as to what is patentable eligible subject matter. In Alice, the Supreme Court stated that the claims of the patents at issue were not patent eligible. The Supreme Court found that the claims “were directed to an abstract idea” and did not recite “significantly more” than an “abstract idea” and therefore were ineligible for patent protection.
Many patent attorneys, including myself, believe that Alice was problematic because Alice mainly focused on what could not be patented. As a result, practicing patent attorneys and United States Patent and Trademark Office (“USPTO”) examining attorneys were left with a limited understanding of what could be patentable subject matter. Since Alice, however, the USPTO has begun to assist practicing patent attorneys by releasing material aimed at providing direction including, the “2014 Interim Guidance on Patent Subject Matter Eligibility” (the “2014 Guidance”) and the “July 2015 Update on Subject Matter Eligibility” (the “July Update”).
The July Update provided examples of patent eligible claims for software related inventions. These examples were intended to assist both USPTO examining attorneys and practicing patent attorneys to understand what could be considered an “abstract idea” and thus not patent eligible, and what could be considered “significantly more” than an “abstract idea” and thus patent eligible. The 2014 Guidance and July Update are helpful for determining software invention patent eligibility, drafting software patent claims, and drafting responses to USPTO 101 rejections. For the benefit of the reader, you can find a link to the examples provided in the July Update at the bottom of this article.
Example 21 of the July Update
Example 21 of the July Update provided a hypothetical claim that was patent eligible. The patent eligible claim was software related and performed functions to alert users with time sensitive information. As the USPTO explained, the claim “does contain additional elements that amount to significantly more because there are meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment.” The USPTO further explained that the claim contained “additional limitations” that transformed the claim from “a generic computer performing generic computer functions” to “an ordered combination” that addressed an “Internet-centric challenge” of alerting a subscriber with time sensitive information when the subscriber’s computer is offline. The claim recited language that was directed to solving a problem created by existing technology and therefore the claim was patent eligible.
Example 23 of the July Update
Example 23 of the July Update included two hypothetical claims that were patent eligible. The first patent eligible claim of example 23 was a software invention associated with graphical user interfaces. The claim recited a series of steps for relocating textual information in an underlying window to an unobscured portion of the underlying window. The USPTO explained that the claim was not “directed to an abstract idea” because it did not include “any mathematical concept” or “a mental process” “that can be performed in the human mind, or by a human using a pen and paper. Instead, the claim was rooted in computer technology to overcome a problem specifically arising in graphical user interfaces.” Therefore, the claim was not directed to a judicial exception and was patent eligible.
The second hypothetical patent eligible claim of example 23 recited language that also was a software invention associated with graphical user interfaces and included a mathematical algorithm. The software invention was for scaling and relocating textual information in overlapping windows of a graphical user interface. The USPTO explained that the claims were not “merely attempting to limit the mathematical algorithm to a particular technological environment”. Additionally, the claim limitations recited “a specific application of the mathematical algorithm that improves the functioning of the basic display function of the computer itself.” As a result, the claim was patent eligible because the ordered combination of the additional claim limitations demonstrated an improvement to a computer’s basic ability to display information and interact with the user. Therefore, the claim recited “significantly more” than an “abstract idea” and was patent eligible.
Example 25 of the July Update
Example 25 of the July Update was an exemplary analysis modeled after the technology in the case Diamond v. Diehr, 450 U.S. 175 (1981), which is an important case in United States patent law. The USPTO analyzed two claims involving software both of which are patent eligible. The claim recited a series of acts including a mathematical algorithm for determining the temperature of the mold and providing that temperature to the computer. The USPTO explained that besides the mathematical relationship, the claim recited additional elements of providing a digital computer with a data base of values as well as other processes tied to a physical machine, including initiating an interval timer, constantly determining the temperature of mold, constantly providing the computer with the temperature, using the computer to perform the calculations and comparisons, and opening the press automatically when a certain value was met. The USPTO noted that while by themselves the additional elements would not be patentable, the combination of these steps provided “significantly more” than an “abstract idea”. Therefore, the claim would be patentable.
The second patent eligible claim of example 25 was a software invention for enhancing the ability of a specific rubber molding device to open the press at an optimal time for curing the rubber. The USPTO explained that claim recited elements that do not merely link an equation to a technical field, but added meaningful limitations on the use of the mathematical relationship by specifying the types of variables used (temperature and time), how they are selected (their relationship to the reaction time), how the process used the variables in rubber molding, and how the result is employed to improve the operation of the press. Therefore, the claim integrated a concept into an eligible control scheme to improve another technical process and therefore was patent eligible.
Example 27 of the July Update
Example 27 of the July Update provided a claim taken from U.S. Patent no. 5,230,052 and was found to be patent eligible. The claim recited a series of steps for loading BIOS code on a local computer system from a remote storage location. The claim included a limitation for initializing a local computer system using BIOS code stored at a remote memory location, by triggering the processor to transfer BIOS code between two memory locations upon a powering up of the computer and transferring control of the processor operations to that BIOS code. The USPTO explained that it was clear that the claim as a whole amounted to “significantly more” than an “abstract idea” and thus was patent eligible.
In summary, according to the 2014 Guidance and July Update, the following limitations may qualify as patent eligible subject matter when recited in a claim: improvements to another technology or technical field; improvements to the functioning of a computer itself; effecting a transformation or reduction of a particular article to a different state or thing; adding a specific limitation other than what is well-understood, routine and conventional in the field; adding unconventional steps that confine the claim to a particular useful application; and, other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. On the other hand, according to the USPTO, the following limitations have been found not to qualify as patent eligible subject matter when recited in a claim: mere instructions to implement an abstract idea on a computer; appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality; and, insignificant extra-solution activity. The attorneys at The Plus IP Firm have helped hundreds of clients protect and enforce their patent rights. The Fort Lauderdale patent attorneys of The Plus IP Firm are available to help you protect your software invention. To schedule an appointment to discuss your invention click HERE.
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