Pathways For Software Patent Claim Eligibility under 35 U.S.C. § 101

Patent protection for software-related inventions can be challenging due to the evolving interpretations of 35 U.S.C. § 101 and the unique nature of software as an invention category. Understanding the main pathways to patentability is critical for determining whether a software invention qualifies as patent-eligible subject matter. In this article I explore three main pathways with a focus on practical strategies and legal insights for inventors and stakeholders.

1. Pathway A: Self-Evident Eligibility

Under Pathway A, claims whose eligibility is self-evident may qualify for patent protection through a streamlined analysis under step 2A of the Alice/Mayo test.  The Alice/Mayo test is the U.S. Supreme Court’s framework for determining non-patentable abstract ideas from patent eligible subject matter.  These claims may or may not recite a judicial exception, such as a mental process that can be performed in the mind, but their patent eligibility is apparent without requiring further scrutiny.

For instance, in Example 47 of the United States Patent and Trademark Office’s (USPTO) July 2024 United States Patent and Trademark Office (USPTO) Revised Patent Subject Matter Eligibility Guidance (“2024 PEG”), Claim 1 of the anomaly detection method – an application-specific integrated circuit (ASIC) for an artificial neural network (ANN) – is eligible under this pathway. This claim is directed to hardware that implements an ANN and is clearly patent eligible given that the claim does not recite any non-patentable judicial exceptions and the eligibility is straightforward, it demonstrates the streamlined analysis possible under Pathway A.   This example is significant because it highlights a clear-cut case where the implementation of a machine, such as an ASIC, inherently avoids judicial exceptions and showcases how hardware-specific claims can streamline eligibility under Pathway A.

Key Takeaways: If your software related invention includes specific hardware components that are novel or provide a novel benefit, then recite those elements as a pathway to eligibility. While not all hardware components recited in a patent claim will lead to patent eligibility, patent claims reciting specific components used in novel ways may increase the probability of finding that a patent claim is patent eligible subject matter.

2. Pathway B: Not Directed to a Judicial Exception

Pathway B applies to claims that are not directed to an abstract idea under Step 2A of the Alice/Mayo test. For example, Example 47 of 2024’s PEG’s Claim 3 describes a method for detecting malicious network packets using a trained ANN. The specific steps, such as detecting anomalies and determining whether they are associated with malicious packets, address the ‘judicial exception’ issue by applying the abstract idea of pattern recognition to improve network security in a tangible and practical way. The claim recites specific steps, such as detecting anomalies and determining whether they are associated with malicious packets. By clearly integrating these elements into a method that improves network security, the claim is not directed to a judicial exception and is eligible under Pathway B.

Key Takeaways: To succeed under Pathway B, structure claims to focus on the concrete implementation of the software to a particle application and avoid overgeneralization that could lead to classification as non-patentable subject matter. Also, the patent drafter should include support in the patent application’s specification as to how these particular claim elements improve functionality of the computer itself or provide improvements to the technical field (such as network security, fraud detection, etc.).

3. Pathway C: Significantly More Than a Judicial Exception

Pathway C addresses claims that fall within a statutory category, are directed to a judicial exception, but recite additional elements that amount to significantly more than the exception itself. “Significantly more” typically involves elements that improve the functioning of a computer, integrate the abstract idea into a practical application, or apply the idea in a novel and non-conventional manner. For example, a claim might include steps that enhance the efficiency of data processing beyond generic computing methods.

This pathway aligns with the Step 2B analysis of the Alice/Mayo test and often involves demonstrating an “inventive concept” that transforms the exception into a patent-eligible application.

An example of this can be found in Example 45, Claim 3 of the USPTO’s Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”), which describes a controller for injection molding a polymer. The claim recites specific steps, such as monitoring temperature and adjusting curing times based on a mathematical relationship, to improve the functioning of an injection molding system. But most importantly, claim 3 recites a unique method measuring the temperature of the mold.  The unique method of measuring the mold’s temperature was an inventive concept and significantly more than just a simple abstract idea.

Key Takeaways: To navigate Pathway C successfully, identify and articulate the inventive concept in your software invention. Focus on how the invention goes beyond the abstract idea to solve a technical challenge or achieve a real-world benefit. For example, in cryptography, the ordered combination of steps may provide a unique way of improving existing technology.

Strategic Considerations for Software Patent Applicants

1. Collaborate with Patent Counsel Early: Developing claims that aligning with the § 101 requirements demand careful drafting and a deep understanding of relevant case law. Engaging an experienced attorney early in the process can help refine the focus of your application.
2. Use Detailed Specifications: A well-prepared specification that thoroughly explains the software’s operation, technical benefits, and practical applications can strengthen your case for patent eligibility.
3. Anticipate § 101 Rejections: Many software-related applications receive initial rejections under § 101. Preparing strong arguments and evidence to address these rejections can improve the likelihood of success.

Conclusion

Securing patent protection for software-related inventions under 35 U.S.C. § 101 requires navigating complex legal standards and clearly demonstrating how your invention fits into one or more pathways to patentability. Engaging knowledgeable legal counsel and crafting a thoughtful, detailed application are key steps in protecting your innovation and securing valuable intellectual property rights. By focusing on specific implementations, real-world applications, and inventive features, applicants can confidently navigate eligibility challenges.

To learn more about Derek Fahey, Esq. who authored this article, click HERE.