Key takeaway: Despite the Supreme Court’s recent pronouncement of patent-eligible subject matter, cybersecurity innovation will remain an active area for intellectual property protection through the patent application and prosecution process.

Because cybersecurity protection is of critical importance to businesses, it has become commonplace, resulting in a fundamental impact on other areas of the law. Where are practitioners observing the most change – patenting cybersecurity software.

The United States Patent and Trademark Office (USPTO) received 1,087 cybersecurity-related patent applications between 2000 and 2022. The U.S. has the world’s largest cybersecurity workforce housing 1.1 million cyber jobs. Companies that invest in cybersecurity protection with the proper internal policy regulations will best be positioned to protect their intellectual property.

After the U.S. Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International, the USPTO began to treat patent applications containing process claims or method claims with a higher level of caution. Process claims or method claims describe an invention as a series of steps to achieve a technical solution and are usually considered to be patent-ineligible subject matter because they are directed to an “abstract” idea.

The Alice decision pushed practitioners to draft software patent claims that define the technological steps with specificity and therefore enable the innovative technical solution. Because most patent applications include a background of the invention, it is critical to include a detailed discussion of the technical context of software-driven innovations.

Despite patent examiners being technically trained, certain examiners may not have the subject knowledge needed to understand the “uniqueness” or need for the innovation. Practitioners are encouraged to provide the background on how the innovation was developed and the technical needs it addresses within the application. Providing a more descriptive background equips the patent examiner with a better understanding of the innovation’s practical value within the industry.

A patent application can include an explanation of how technical challenges were overcome to arrive at the solution, the technical advantages of the solution, and practical results and improvements that can be obtained with the solution.

When patenting a cybersecurity innovation, the practitioner should consider including how the innovation improves the security of the computer system or network, or how the innovation improves the identification and handling of malicious attacks.

Upon receipt, the USPTO categorizes patent applications by technological area and assigns them to the relevant technical group for examination. Applicants of cybersecurity patent applications should aim to have their cases assigned to Art Units 2431 or 2491 under the heading “Information Security.” Applicants can increase their chances of having their application assigned to these units by preparing patent applications that emphasize the technical details relevant to the cybersecurity solution. The title, the field section, and the claims can all be drafted to highlight the technical detail. Tailoring the patent application to include relevant technical details will most likely result in a patent examiner, technically knowledgeable in that space, reviewing the application.

This heightened level of specificity approach is different from previous observed approaches and is revolutionizing how patent law is practiced.

To learn more about patent software-related innovations visit:

https://www.wipo.int/wipo_magazine/en/2019/04/article_0006.html

https://therecord.media/more-than-2000-cybersecurity-patent-applications-filed-since-2010-report