1. Why It's So Hard To Patent Computer Software
2. Is Software Patentable?
3. The Alice Corp. Decision and Its Impact on Software Patent Applications
4. What is Patent Eligible?
5. Is Software Patentable in the United States?
6. The Law
7. When Is a Software an "Abstract Idea?"
8. When Is an Abstract Idea “Transformed” into a Patentable Software?
9. Best Practices

Why It's So Hard To Patent Computer Software

Software patents don't last very long. Unlike other inventions, software is updated every few years, replacing the old with the new. It can take four years to complete a patent application, in which its commercial life is gone.

Is Software Patentable?

The ability to place a patent on software has been up for debate for the past 50 years. The design and technical sides of software can be placed in hardware, making it seem like a good candidate for a patent. Opinions on this have changed globally. The Court of Appeals for the Federal Circuit (CAFC) in the United States used to be OK with software patents, but that doesn't seem to be the case anymore.

The Alice Corp. Decision and Its Impact on Software Patent Applications

The decision made by the Supreme Court during this case shook up patent law, which brought many lawyers and companies to question the possibility of placing a patent on software. Due to the Court's decision, it has greatly impacted how patents on software will be handled now and in the future. The Supreme Court concluded that the Alice Corp. patents weren't valid as the claims came from an abstract idea.

Due to this decision, there is now a two-part test to see if an innovation has the ability to be patented. This test is now being used by the USPTO in all patent applications involved in technology. They have been able to reject many patent applications because of this test; more specifically, financial and business-related patents.

Many of the rejections are due to how the USPTO determines what is an abstract idea and what can make a claim more than just an abstract idea. They have tried to remedy this problem by creating a list with examples that show what can and can't have patents. Practitioners now use these examples to help them avoid future patent rejections.

Other questions may be considered before software is seen as eligible for a patent, such as if it's unique to one hardware, how it works to improve performance, and if the software can help in another area of technology. Informing your patent lawyer about your software in detail can be beneficial when seeking a patent. They will be able to write up the description of the software so that it has more of a chance of being eligible for the patent.

What is Patent Eligible?

Software can be patentable but requires more steps to get there. The software should be new and innovative enough to not be seen as an abstract idea by the USPTO. This doesn't guarantee patent eligibility; however if it is unique it may increase the chances of getting the patent.

Is Software Patentable in the United States?

Due to the decisions recently made by the Supreme Court, it takes more information than what the software does to determine if it's eligible for a patent.

The Law

There are two ways to be eligible for a software patent, but only one of the two is required:

  • The innovation must be more than just an abstract idea, or
  • If it is seen as an abstract idea, give details on how the software changes the idea to be more than abstract.

When Is a Software an "Abstract Idea?"

If the application focuses more on generic ways the software works on computers, then it is seen as abstract. Some abstract ideas include mathematical algorithms used to help business practices, and the simple execution of the software by a computer.

When Is an Abstract Idea “Transformed” into a Patentable Software?

Your software could be eligible for a patent even if it is labeled as an abstract idea, as long as it's rooted to computing technology or solves a technological issue in a unique way. You should also write the patent claims in detail to avoid rejection.

Best Practices

Ultimately, the way you describe your software innovation will determine if you will get the patent. By describing the technical problems your innovation solves, your chances of patent eligibility will greatly increase.

If you need help with software patents, you can post your job on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.