Some Practical Approaches to Prosecution of Patents for Computer or Software Implemented Inventions

by PretiFlaherty

The patentability of inventions implemented with a computer or based on software have come under increased scrutiny in recent years.  One of the primary issues related to the increased scrutiny is whether the patent disclosure satisfies the statutory requirements of 35 U.S.C. §101.  One aspect of these requirements for patent eligibility generally mandates that the invention not be directed wholly to an abstract idea.  One of the precepts for determining patent eligibility in accordance with this aspect is that a concept that is otherwise obvious, or non-patentable, such as abstract ideas, does not attain patentable status by being implemented on a computer or in software.  Aside from the current judicial scrutiny on when computer or software implemented inventions qualify for patent eligibility, the question addressed here is what steps can presently be taken in patent applications to address objections or rejections under §101 that are presented by Patent Examiners.

The issue of patentability for inventions that are implemented on a computer or in software has been addressed in numerous judicial venues and within the Patent Office, with clear guidelines for what qualifies as statutory subject matter being somewhat elusive.  At present, the Supreme Court of the United States is considering the question in the case of Alice Corp. Pty. Ltd. v. CLS Bank Int’l., (Docket No. 13-298 U.S.; Appeal from 717 F.3d 1269, 106 U.S.P.Q.2d 1696 (Fed. Cir. 2013).  Oral argument was presented in that case on March 31, 2014, and a full spectrum of views were referenced regarding whether or when an invention implemented on a computer or in software is an abstract idea, or would otherwise be eligible or ineligible for patentability under §101.  What has become clear in this court case is that the question of patentability for computer implemented or software inventions is difficult to answer in the general case.  Rather, it appears that the question of patentability is answered with respect to specific case examples, with commentary on the case indicating that it will be unlikely that the Supreme Court will announce a significantly broad change in patent law for these types of cases.

Assuming, therefore, that computer or software implemented inventions will continue to be eligible for patentability in some form, the question remains as to how will Examiners and the Patent Office apply the statutory requirements under §101 in these types of patent applications.  Based on a review of positions taken by Examiners in cases dealing with computer or software implemented inventions, there appear to be several guidelines for prosecuting such applications with regard to terminology that Examiners tend to accept as compliant with §101.

In Ultramercial, Inc. v. Hulu, LLC, (Fed. Cir. 2013), Chief Judge Rader of the Court of Appeals for the Federal Circuit noted several factors to consider in determining eligibility of computer or software based inventions.  Judge Rader noted that tying a claim to a computer is an important indication of patent eligibility, since such a tie moves the claimed subject matter away from an abstract idea.  He also indicated that if the claims define an application of an abstract idea, rather than an abstract idea itself, they are more likely to be patent eligible.
Judge Rader also addressed application of the machine-or-transformation test for determining eligibility under §101.  This test states that a claim to a process must recite implementation with a particular, non-trivial machine, or transform an article from one thing or state to another.  In Judge Rader’s view, the machine or transformation test has far less application to inventions of the information age, since these inventions defy easy classification under such a test.  In Bilski v. Kappos, 130 S. Ct. 3218 (2010), the Supreme Court rejected the machine-or-transformation test as a sole test of patentability under §101.  Nevertheless, the machine-or-transformation test continues to be used by the Patent Office as the only test for patent eligibility of computer or software-based patent application claims under §101.  In addition, the Patent Office focuses on whether the claim language includes insignificant pre-, current or post-solution activity to meet the requirements of §101.

Given the above noted issues in pursuing a patent for computer or software implemented inventions, a review of how Patent Examiners are treating such inventions under §101 can provide at least some practical assistance in determining patent eligibility for these types of inventions.  The approach taken by a number of Patent Examiners provides some useful insights into how or if a claim can be made to comply with §101, and provides some of the evolving claim terminology usages that appear to find acceptance.

For example, Patent Examiners have found that terms related to collecting or recording data in a patent claim tend to be identified with patent ineligibility.  Terms used to define steps in a method claim such as “receiving,” “forwarding,” “displaying,” “collecting,” “storing,” “associating,” “establishing” or “refining” data have been viewed by certain Patent Examiners as representing insignificant solution activities with respect to determinations of patent eligibility.  Accordingly, while these method step terms need not be avoided, they may not by themselves make a claim eligible for patent.

Some method step terms that Patent Examiners have found to indicate significant solution activities, which tend to meet the requirements for patent eligibility, include “monitoring,” “comparing” and “matching.”  This terminology implies real-world operations, which appear to rise above the threshold of mere data manipulation, and produce a result that is at least logically tangible.

However, use of such claim terminology may still not qualify a claim for patent eligibility under §101.  Even where method step claim terms are deemed to represent significant solution activity with respect to patent eligibility, the threshold for complying with §101 may not necessarily be met in the view of a Patent Examiner, until the clauses using such terms also assign the activities to a specific machine or machine component.  Accordingly, reciting a particular physical or systemic component in each clause of a method claim that also uses significant solution activity terms can help to comply with the requirements of §101.

Thus, although the specifics of eligibility of computer or software implemented inventions continues to be debated at different levels of the judicial and patent system, there at least appear to be some practices that can be of assistance in pursuing such inventions for patent protection.  For example, the chances for eligibility of computer or software implemented inventions for patent protection appear to be improved by (1) always reciting a machine, e.g., a processor and a memory for implementing the method, (2) using “significant” solution activity terminology for the method steps that produce a conceptually tangible result, and not mere data manipulation and (3) potentially including a machine or machine component recitation in each clause of the method steps.  In addition, it is often helpful to include a “system” claim that is drafted in terms of components and their cooperative relationships, where the components can be described in terms of their functional operation, e.g., a “run-time engine” that manipulates or operates in conjunction with other components defined within a computer or software environment.

Although the definition of an abstract idea will likely continue to be debated in the context of patent eligibility, patents for computer or software implemented inventions will continue to be issued.  The above noted practices can be of use in dealing with the present cycle of scrutiny related to patentability for computer or software implemented inventions and will hopefully serve to increase the overall quality of patents that issue for these types of inventions.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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