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Modern Software Patents: Can I Patent My Software Invention, and Are My Current Patents Valid?

February 06, 2018

Computer software has driven a significant part of our economy for the last half-century. From simple DOS programs to complex software and mobile apps that currently drive business and industry, innovation in software and computer technology continue to move at an increasingly fast pace. As a result, intellectual property protections afforded to computer and software innovations have changed dramatically.  Before you spend a lot of money to have a patent application prepared and filed, you need to understand the modern legal framework around software patents.  If your invention simply uses existing computer components to do what a human can do on paper more slowly, you are likely to not be able to patent your invention. This applies to new patent applications as well as patents that are already issued.

By 2014, the United States Patent and Trademark Office was issuing close to 150,000 software-related patents each year. One estimate is that by 2008 there were around 250,000 patents related to smartphones alone.  Computer and software related innovations have the ability disrupt and reshape entire industries.  If you or your business operate in this technological area, it would be wise to file for patents for your invention in most cases – if you have something that can be patented. Before filing for a patent, you should consider the following:

  1. Record keeping – how good are the records of the creation of your invention, and do you need to improve them prior to working with an attorney?
  2. Timing – the current law assumes that priority goes to the first inventor to file an application, so deciding and moving quickly can be important.
  3. Cost and benefit – will you get value out of a patent that will offset the cost of preparing and filing a patent application, as well as the cost of responding to actions by the Patent Office?  Make sure that you understand the process, what an issued patent does for you, and, perhaps more importantly, what it does not do for you.
  4. The current state of the art – are there other inventions either filed for, issued as patents, or in the marketplace that could keep you from getting a patent issued or which would result in you infringing on someone else’s patent rights?
  5. Changes in patent law - how do they affect your particular invention?

The playing field for software patents changed dramatically in 2014, when the United States Supreme Court decided Alice Corp. v. CLS Bank – a case which considered the validity of four software patents. The patents covered a financial trading system in which the risks of non-payment for the buyer and seller were reduced by involving a third party. Alice Corp sued CLS Bank for patent infringement when it started using a similar financial trading service, and CLS countersued alleging that Alice Corp’s patents were invalid.

The Supreme Court found that Alice Corp.’s patents were invalid. Patents cannot be granted for: (1) laws of nature; (2) natural phenomena; and (3) abstract ideas. It is this third exception that the Alice Corp decision relied upon and it has become the battleground in a post-Alice Corp world for software patents. In finding the patents invalid, the Court said that “the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.” In other words, if your invention is simply an abstract idea (such as counting objects or adding numbers), and relies upon standard computer operations to implement, the invention is not eligible for patent protection. The Supreme Court, however, did not clarify what would have made Alice Corp’s idea patent-eligible but said only that an invention had to provide something “significantly more” than an abstract idea. 

From Alice Corp came the current test which courts use to determine whether a software innovation is patent-eligible. First, the court decides if the patent is for an abstract idea. If not, and it does not fall into any of the other applicable exceptions, then it is able to be patented. However, if the patent is for an abstract idea, then the court must decide if the patent adds anything inventive to implement the abstract idea which would transform it into a patent-eligible claim.  For example, an invention for the abstract concept of filtering content on the Internet is patentable if it states a unique way to use ordinary (and unpatentable) devices, rather than simply using computer, network, and Internet components to filter content.  In particular, an invention that makes the filtering process more dynamic and efficient and “improve[s] the performance of the computer system itself” is patentable.

Distilling the Alice Corp test into a single unifying principle is difficult but the courts interpreting it provide some idea of how to navigate the uncertain landscape.  First, it is important to note that an Alice Corp review is basically a reading exercise for the court.  The court analyzes the words of the patent itself to determine whether that patent is directed towards an abstract idea or provides an inventive concept.  This is important.  Having a patent that is written carefully is critical for a software invention.

Second, the patent cannot simply be for something that can be performed by a human or already exists, and simply uses computers to do that thing electronically, even if it speeds up the process.  For example, a patent for a “post office for receiving and redistributing email messages on a computer network” was held to be invalid because all it did was take the conventional business practice of screening messages that brick-and-mortar post offices and mailrooms perform and use conventional computer equipment in a conventional way to do the same thing. The patent failed because “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”[1]

Third, courts have shown a willingness to carefully parse even the most technical language to understand the patent’s ideas and methods in their most basic form.  Decisions repeatedly show courts requiring patents to show not only what problem that patent attempts to solve but also how that patent intends to solve it.  For example, a patent for a “method and system for sharing streaming video over a network” by “converting the video file into a streaming video file,” “generating an identification tag,” and “embedding the identification tag…into a web page” is invalid because “it does not specify how these tasks are completed, but rather merely specifies what is to happen.”

As of this writing the United States Supreme Court has heard oral argument in Oil States Energy Services, LLC, v. Greene’s Energy Group, LLC, to determine whether or not the internal process for reviewing the validity of patents issued by the Patent Trial and Appeal Board at the US Patent Office (called an Inter-Partes Review (IPR)) is constitutional, or requires a review by a federal court with the opportunity for a jury. If the Supreme Court finds the IPR process unconstitutional, reviews of issued patents for validity will become even more uncertain and costly. 

In closing, you should take a careful look at how your software inventions, patented or unpatented, relate to the Alice Corp. analysis.  Is it is worth pursuing patent protection or attempting to enforce patents that you already have?  If you do choose to pursue patent protection you should be prepared to spend a significant amount of time in preparation and in careful patent drafting.

Attorneys Duncan Byers and Tyler Rosá assist businesses and individuals with intellectual property matters.

[1] Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1317-18 (Fed. Cir. Sept. 30, 2016)

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