I recently shared a post stating that computer software is currently the subject matter of approximately 60% of patent applications. This is a 50% increase since 2010. What is patentable computer software?
What remains as a vexing problem is the continued muddled status of what comprises patentable software. The Federal Circuit court complains that the US Supreme Court has stated an unworkable or non-sensical standard. There are also initiatives within Congress to try to amend the patent law.
All of this is well and good, but it is of absolutely no help to the entrepreneur today trying to decide what to retain as a trade secret or, alternatively, incorporate into a computer business method.
The best help I can provide is to try and clarify what are the characteristics of software that can be allowed as patentable subject matter.
First, the most often cited cause of the dithering are the Supreme Court decisions of Mayo v. Prometheus in 2012 and Alice v. CLS Bank in 2014. (Mayo pertains to medical diagnostic procedures and is not strictly related to software, but it still muddies the water.) In these decisions, the Court made determinations of what constituted unpatentable “abstract ideas” under 35 USC §101.
These decisions tied the USPTO examiners into knots and nothing was being allowed. The USPTO administration has subsequently made several attempts to provide clarification to the examiners, most recently in January 2019.
I have posted articles in Februaryattempting to make sense of all of this. This is another attempt to define what and when is computer software patentable.
Performance of General and Known Functions
First, in many applications, the computer software pertains to a mathematical concept. For example, the software involves the steps of collecting, analyzing and displaying data. In other cases, the software pertains to “methods of organizing human activity”. These can be fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including contracts, advertising, marketing or sales activities, shopping or behaviors or business relations); managing personal behavior or relationships or interactions (including social activities, teaching, and following rules or instructions). Another subject matter can be automating mental processes including observation, evaluation, judgment or opinion.
Generally, these will be deemed to be abstract ideas or concepts that do not constitute novelty or innovation. The computer is simply doing what people have been doing in the past.
However, (and this is critical) if it can be shown that the software provides a significantly enhanced practical application to the previously performed human function, then it may be patentable. Examples could be where the computerized process includes elements of specific limitation that are not “well understood, routine, (or) conventional activity in the field. Stated differently, if the inventor can show that the software program is performing a known task in a new or different way, (in effect, performing a new task) with a better result, then it should be patentable subject matter. (But you will have to convince the examiner of this argument. Therefore I suggest that you need a strategically drafted patent application.)
Machine or Transformation Test
Also, if your software is operating machinery, equipment or utilized in the transformation of matter, e.g., controlling the curing of a substance, then it is patentable. This path of patentability has been long established under the Supreme Court decision of Diamond v. Diehr(1981) for a software program controlling the curing of rubber.
It is frustrating that the determination of whether software or a computer business method is patentable will be determined on a case by case basis. However focusing on the new and improved way the software is dealing with the variables will be key to making the argument of patentability. Also if software is taking a new approach to solving a problem, i.e., manipulating or analyzing a new category of variables to achieve a solution, then I believe there is a strong case for patentability. But again, this will have to be made clear to examiner in the inventor’s written description of the patent application.
Hopefully this is of some help.
Copyright David McEwing, 2019