Guidelines For Defining an Algorithm in a US Patent Application
If you’re looking to patent an algorithm, you have to carefully consider the different aspects of this particular type of technology. For example, a stand-alone algorithm is probably abstract mathematics, and therefore isn’t patentable. In contrast, a practical application of an algorithm may be able to receive patent protection. Listed below are some guidelines for describing an algorithm in a patent application. This article will also provide you with a detailed explanation of COVID-19, which will interfere with the evaluation of the obviousness of the invention.
Practical applications of an algorithm may be patentable
There are two main issues when determining whether a new algorithm is patentable in the US. First, the claimed algorithm must be technically feasible. Second, it cannot be merely a mathematical algorithm. In the US, a claim can be only for a practical application of the algorithm, e.g., a computer program that predicts arrhythmia or analyzes seismic measurements. If the claim is deemed technical enough, then it may be patentable.
In the past, the U.S. Patent and Trademark Office (USPTO) has rejected most software patent applications. However, there have been recent changes to the guidelines. Software that improves computer operations, speeds up computer systems, or secures computers, is patentable. Nonetheless, certain types of new data storage or processing techniques may not be patentable, as the Supreme Court was unwilling to declare them abstract ideas.
The Federal Circuit’s opinion in the State Street Bank case was decisive in determining whether a claim to an algorithm could be patented. The court found that an algorithm was patentable if it was accompanied by a practical application. Furthermore, it must have an inventive aspect. As a result, claims based on software must be characterized as new and non-obvious.
Exceptions to abstract idea exception
Several courts have cited the ‘abstract idea exception’ as an example of a mental process that could qualify as an abstract idea. For example, in Versata Dev. Group. v. SAP Am., Inc., 115 USPQ2 1681, the court identified numerous product claims that recited mental processes as an example of ‘abstract ideas.’ Despite these cases, the ‘abstract idea exception’ remains a controversial area.
While it is true that abstract ideas aren’t technically invented, the Alice test may be an appropriate method for determining whether a given claim is directed to one of these categories. While it does not include a directed to inquiry or an inventive concept inquiry, the Alice test often involves only one part. This inquiry examines whether the claim’s specificity, technical character, and citation of prior art are sufficient to establish whether it is directed to an exception.
The Supreme Court has ruled that mathematical formulas and fundamental practices are not abstract ideas. Nevertheless, the bright line prohibition does not preclude the judiciary and U.S. Patent and Trademark Office from addressing these issues. The abstract idea exception is part of 35 U.S.C. SS 101 and 112, and is a useful tool to protect inventions. Listed below are some examples of abstract ideas.
Guidelines for describing an algorithm in a patent application
The Guidelines for describing an algorithm in a US patent application describe two essential components of computer-implemented inventions. The written description must be sufficiently detailed to enable a person of ordinary skill in the art to make and use the claimed invention. Failure to disclose such information could result in a patent being rejected. In order to avoid this risk, inventors should disclose specific algorithms that perform the claimed functions.
The disclosure of algorithms must be in sufficient detail to enable a thorough examination of the underlying mathematics. Moreover, the algorithm must demonstrate possession of the claimed properties, such as that it can generate certain kinds of outputs or perform other functions. The disclosure must also demonstrate the interaction of claimed hardware and software. For software-related inventions, the disclosed algorithms must illustrate how these two elements interact.
In a recent case, the Federal Circuit outlined its test for determining the sufficiency of written description. This test looks at whether the application discloses the claimed function sufficiently and reasonably conveys it to a person skilled in the art. Moreover, the Federal Circuit noted that the requirement is not met if the specification merely describes the desired result. Applying this test to the claimed software-related function, the Federal Circuit found that the specification must show possession of how the claimed function is achieved.
Exceptions to COVID-19
When patenting algorithms, there are a few factors to consider, including the statutory categories for eligible subject matter, the “abstract idea” exception, and the nature of the claimed process. The Supreme Court has ruled that “abstract ideas” are not patentable in the US, but improvements to computer-related technologies are. The claimed process must be an improvement to a computer-related technology, such as a software program, or a machine.
The statutory and administrative requirements for determining patent eligibility have shifted dramatically since the last PEG was issued. However, the PTAB still applies this guidance as a guide when determining whether a claim meets a statutory or judicial exception. The PTAB applies the 2019 PEG in appeals from Examiner rejections and other Section-101 decisions. The new PEG also outlines the process for determining patent eligibility and the scope of an exemption.
The statutory COVID-19 climate may be problematic for AI and machine learning inventions. The purpose of these algorithms is unclear, so users may doubt their utility. The depository requirement for AI working models may alleviate this problem. In addition, it promotes transparency of the inventions. However, AI/ML inventions should not be limited to specific technological applications. In general, algorithms should be confined to a broader range of applications.
Considerations for describing an algorithm in a patent application
Before submitting a patent application for an algorithm, you should understand what the term “algorithm” means. In patent terminology, this is the process of creating a computer program or algorithm by analyzing data and evaluating how it changes. The main objective of the patent description is to enable “skilled in the art” people to reproduce and use the algorithm. Thus, an algorithm should provide sufficient details for computer programmers to write code and implement it.
In many cases, computer algorithms and computer programmes are considered similar in patentability discourse. Consequently, it is often difficult to separate the two. However, the key to patentable subject matter is to make the computer algorithm or software clearly distinguishable from other computer programmes or algorithms. Computer programmes and algorithms are both often referred to as software, but the differences between these two terms should not be confused.