When writing a software patent application, it’s important to consider several aspects of the invention. This article will cover all of the essential elements of writing a successful application. Using these tips, you can develop your own software patent application. You’ll be well-prepared to meet the requirements and be granted a patent for your software. After all, your product is an essential part of your business.
Description of the Invention
When you describe a software patent application, you must make it as replicable as possible. The idea is to explain how the software will perform its functions from the user’s perspective, as well as from that of a computer. In so doing, you must include enough information to enable software engineers to write the code. The more detail you give, the better your chance of a successful software patent application.
The description must provide technical details of how the computer performs the innovative features and must also give some background information about the user experience if it’s not clear to the reader what the software does. An effective description describes the method from three different viewpoints: the computer system that performs the method, the user, and a third party.
Additionally, a good patent specification usually includes drawings, which for software patent applications may have flowcharts, timing diagrams, state transition tables/charts, screenshots or imagery that illustrate how the software works. Flow charts are also an excellent tool to explain how software functions. They show the steps required to perform the claimed function and thus enhance your chances of patent approval as they help to explain your software to your peers. For belt-and-suspender protection, you might want to consider a copyright application for the code to protect from software piracy. However, copyrights only protect the expression and not the function of the invention and thus lack the breadth in coverage of patents.
In order to file a successful software patent application, you must meet certain formal requirements.
First, you must determine whether your invention is patent eligible. To be patentable, your invention must meet certain key criteria: it must be useful, novel, and non-obvious. The latter requirement is similar to the inventive step requirement used in international applications. The inventive step is necessary because software inventions are abstract and so must be directed to something more than the abstract idea.
Secondly, you must fully and properly disclose your invention in your patent claims. This way, your reader will see that you’ve actually invented the software and that it’s not just an abstract idea. Additionally try to write the application in a way that is easy to understand so that the reader can replicate the process for themselves.
Thirdly, it must address a specific problem. The problem must be “necessarily rooted” in computer technology. If the solution is “unusual,” it should not preempt every application of the idea. The software invention must be “new” or “unique” to a person of ordinary skill in the art at the time of filing. While this may sound simple, deciding whether a software invention is “unusual” or not requires a patent practitioner’s advice and experience. If your software invention is a computer program, it is best to hire a patent practitioner to review your application before you submit it.
Moreover, software must demonstrate how the computer interacts with hardware and processes data. Generally, software that improves the functionality of a computer tends to be patent-worthy as it enables computations previously unavailable.
Once it meets all of these criteria, the application will be granted.
In 2014, the US Supreme Court in the case of Alice Corp. v. CLS Bank in ruling on patent eligibility, delivered a two-step test which has since been colloquially referred to as the ‘Alice Test’. The test consists of the following two steps:
- Determine whether the claims are directed to a patent-ineligible concept; and
- Determine whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claims into a patent-eligible application.
In other words, the invention must have a transformational element to qualify as patent-eligible and not just have a conventional methodology. The abstract idea itself has to be more than just a general principle, a law of nature, or a natural phenomenon. It must be truly novel.
In order to pass the Alice test, your claim must describe the technical features of your invention and clearly explain how your invention solves a problem. You must also be able to show that your invention offers distinct advantages over a prior art piece. Explicitly claim the key technical features of your invention and tie them to the claim language. This will increase your chances of successfully surviving an Alice review.
Working with a patent attorney
If you’re writing a software patent application for a company or for yourself, working with a patent attorney will help you protect your intellectual property. The attorney will need to describe the operation of the invention step by step and understand the overall logic of the software. This will give them the confidence to file the application and receive the protection you deserve.
Software patents are high-tech inventions and are often the subject of a great deal of hype. It’s no surprise that the dot-com bubble lasted longer than many people expected. Unlike other patents, a software patent will protect your creation for decades to come. This is why the application ought to be done with utmost expertise.
Working with a patent attorney in writing & filing a software patent application can be a great way to protect your intellectual property and make the entire process run smoothly. It amplifies your chances of intellectual property protection. You’ll be glad you did.
Writing the Claim
A claim is arguably the most important part of the patent application. This is because it defines what exactly the invention ‘claims’ and what is to be protected. The claims will guide the other parts of the application, such as the specification.
There are two main types of claims in patent applications: dependent claims and independent claims. A Dependent claim aims to define the invention and narrow its scope while an Independent claim translates to broader protection and a greater pool of potential infringers. Software can either be claimed as a new process or an improvement on a known technology.
The first rule to remember is that a good patent claim should define the scope of the protection sought and must clearly distinguish the claimed invention from any prior art. The claim elements must also be explicit. A claim element cannot read on something which only includes the elements A or B. It must cover something whose components are either supersets or equivalents of the elements in question.
If the claim contains more than one element, the additional element should be included in a dependent claim. If there is an absence of sufficient details to support the claims, it is unenforceable. Claims with less details may be invalidated because they are not novel. The patent examiner may reject the claim as being too obvious.
The second important rule to remember when writing a software patent claim is that claims must not read on anything other than the prior art. If something other than the claimed method is described in the specification, it is infringed. Claims need not describe every step in the method, but should include the steps required to implement the method claimed. If not, the claim is invalid.
Consider Method Claims
When writing a software patent, method claims are the first category to consider. Method claims refer to the process itself, not the apparatus performing them. While an invention may be a tangible object, there is no legal requirement that the invention be an actual product.
Nonetheless, method claims tend to receive harsher treatment than other types of patents because they retain an abstract element and thus tend to be harder to enforce. A claim for method performance is best protected when the user is the owner of the entire invention including the apparatus through which the method is performed
The Federal Circuit has suggested that methods and process claims should be treated differently and has imposed a dichotomy between system and method claims, which requires that software perform the process. This makes sense because software is a facilitator of the method, and is a separate entity from the user. But the court’s ruling is open to further amendment and may not be the final word.
As you can see, software patents are challenging to enforce, but the Alice case shows that a method-based invention is more likely to receive protection. The decision teaches us that it is possible to defend an invention based on how it makes something happen.
In general method claims are more likely to qualify for extraterritorial protection as they may be interpreted as involving multiple parties.
Consider Means Claims
Means-plus-function (means claim) claiming is codified in 35 U.S.C. § 112(f) (formerly 35 U.S.C. §112, ¶ 6), which states:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
In the nineties, means claims were litigated as being quite narrow and only to the specific structure disclosed in the description. As a result, patent drafters veered away from means language and used directly the structure in the claims rather than the means to gain broader equivalency. For example, if a car included an engine and described the engine as an internal combustion engine (ICE), if the claims recited the car with the means for moving the car, the claim would have been interpreted to cover the ICE and minor variations therefrom but would not cover the electric or hydrogen engine since such engines are dramatically different and thus not equivalent to the ICE. However, if you had claim the car with the engine, such structural reference to engine rather than the means for moving the car would arguably allow the patent to cover all types of engines.
Means claim thus fell out of favor until Alice. Now many patent attorneys advocate for using means claims in software cases. Now you know how to interpret means claims, and its application will be discussed next in the Uniloc case.
Going through the Patent Office
The prosecution of a US utility patent is simple. Once the application has been filed, it will then be assigned to an examiner, which will begin the prosecution phase. International protection may be important for business purposes. Please note that the filing entity will have one year from the date of an application’s original filing date to file international applications (PCT), that claim priority to this utility patent application.
Sometimes, it is possible to benefit from a earlier filing date. A utility patent that is filed within one year of certain types of filing (usually provisional patent applications) can claim priority to the earlier filing and thus benefit from its filing date. This allows prior art not to be cited against a utility-patent that has been filed between the filing dates.
The USPTO examines a patent during the prosecution phase and sends office actions to the filing organization explaining why the patent isn’t in condition for allowance. The most common reason is that there is “prior art”, which can be publicly available documents, including patent applications and patents. This precludes allowance. This initiates an iterative process that involves amending claims and presenting arguments as to why the amendments should not be taught in the prior artwork. There is always a chance that another office action will receive a response to an office action. There are no limits on the number of office actions that may be received and it is not guaranteed that a patent will ever exit this phase. However, it is possible to maximize your chances of getting a notice of allowance by working with a lawyer.
Allowance and Issuance
The patent office will issue a notice to allowance if the examiner is satisfied that the claims are not taught in the prior art or that all other requirements set forth in the office actions were satisfied. We recommend that you file a continuation application before paying the issue fee.
The continuation can still claim priority to the original filing, provided that no new subject matter has been added. These are extremely useful for patent portfolio strength as they allow one to work on custom-drafted claims to proactive pursue infringers who do not infringe claims from an original filing.
Defending A Software Patent
The Alice/Mayo test is applied during examination at the U.S. Patent and Trademark Office (USPTO) and can be a defense raised against enforcement of the patent. The challenge software patent application drafters now face is how to draft patent applications that can withstand scrutiny under the Alice/Mayo test. We can look at three recent successful software applications where the appeal court specializing in patent cases (the US Court of Appeal for the Federal Circuit or CAFC) found patentable subject matter in 2020:
In Uniloc the Federal Circuit found the following claim eligible:
2.A primary station for use in a communications system comprising at least one secondary station, wherein means are provided
for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.
(Uniloc, p. 4). The Court specifically noted that the application described improvements over conventional communications systems and even looked to the Abstract for an advantage provided by the claimed invention that “enables a rapid response time without the need for a permanently active communication link between a parked secondary station and the primary station.” Id., p. 3. As a result, the court held “the claims at issue are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.” Id., p. 7. The court continued, “like the claims in DDR, the claimed invention changes the normal operation of the communication system itself to ‘overcome a problem specifically arising in the realm of computer networks.’” Id., p. 7. The patent description thus supported the court’s finding that the claims are not directed to an abstract idea under Step One of the Alice/Mayo test, but instead “are directed to a specific asserted improvement to the functionality of the communication system itself.” Id., p. 10.
In Packet Intelligence, the court reviewed claim 19 was directed to a packet monitor and included a packet acquisition device, input buffer memory, parser subsystem, memory for storing a database, a look up engine, and a flow insertion engine. (Packet Intelligence, pp. 3-4) and found technological problems and solutions described in the description:
The asserted patents’ specifications make clear that the claimed invention presented a technological solution to a technological problem. The specifications explain that known network monitors were unable to identify disjointed connection flows to each other, and the focus of the claims is a specific improvement in computer technology: a more granular, nuanced, and useful classification of network traffic. See, e.g., ’751 patent col. 2 ll. 53–56; col. 3 l. 2–col. 4 l. 6. The specifications likewise explain how the elements recited in the claims refer to specific technological features functioning together to provide that granular, nuanced, and useful classification of network traffic, rather than an abstract result. See, e.g., ’789 patent col. 23 l. 38—col. 27 l. 50 (describing the technological implementation of the lookup engine and flow insertion engine as used in the claims); see also ’725 patent col. 10 l. 3—col. 13 l. 4. (emphasis added)
(Packet Intelligence, pp. 14-15).
TecSec involved a multi-level security method claim:
- A method for providing multi-level multimedia security in a data network, comprising the steps of:
- A) accessing an object-oriented key manager;
- B) selecting an object to encrypt;
- C) selecting a label for the object;
- D) selecting an encryption algorithm;
- E) encrypting the object according to the encryption algorithm;
- F) labelling the encrypted object;
- G) reading the object label;
- H) determining access authorization based on the object label; and
- I) decrypting the object if access authorization is granted.
(TecSec, pp. 3-4).
Here, the specification clearly stated the labeling with the required encryption “is part of the focus of the claimed advance.” Id., p. 26. The court continued at length to cite where the specification described both a deficiency and the technical solution using labeling in multilevel security with encryption. Id., pp. 26-28. The Court upheld the validity of the patent in view of the patent description.
In the old days, patents are drafted for the broadest coverage, but in light of Alice, the patent applications need to balance breadth for purposes of infringement with specificity for patent eligibility and non-obviousness. Thus, you should describe in depth the claimed advances of the invention, how the claims are directed to specific asserted improvement to the functionality of the system to achieve the right balance and passing muster under the Alice/Mayo test.