Avoiding Patent Death – Draft Smart Claims

Introduction:

I continue to closely monitor the case law regarding patenting computer software.  The August 26, 2021 decision of Universal Secure Registry v Apple is an example.  In this decision, the Court of Appeals for the Federal Circuit (usual final arbiter of patent disputes) invalided 4 patents as merely claiming abstract ideas.  Abstract ideas are not eligible for patent protection under Section 101.  The claims used broad language to claim use of computers and software to authenticate users and approve commercial transactions without disclosing credit card information to merchants.

Discussion:

As stated, the claims used broad language of generic computer functionality to describe the operation of one or more computers, servers, biometric data sensors, etc. to provide authentication and transmission of approval for financial transactions.  What the court found lacking was specificity in the claims.

The common and accepted practice is to draft claims using broad language in order to achieve broad scope and definition of the patented invention.  The logic is akin to casting a broad net to catch more fish.

The court looked to the patent specification and found admission by the patent owner that most, if not all, steps of the computerized method utilized standard generic computer components and software to achieve known steps of authentication and data processing.  The court repeatedly faulted the claims for lacking specificity.  The court stated “In cases involving authentication technology, patent eligibility often turns on whether the claims provide sufficient specificity to constitute an improvement to computer functionality”.  As discussed in my blog post Patenting Computer Software, demonstrating improvement in computer functionality is one of the key factors to determine software’s eligibility for patent protection.

Use of broad terminology such as “authentication information” is also problematic.  The court stated that “authentication information” could be essentially any information recognizable to the party being contacted.

The court repeatedly found the claims to “simply recite conventional actions in a generic way” and “do not purport to improve any underlying technology”.  I suggest that the claims could have been drafted to reference the deficiency of the conventional software and explain how the software improved computer functionality regarding secure financial transactions.  One method for referencing the conventional deficiency is by providing an expanded claim preamble to the operative claim language.  Recall that the analysis of claims for eligibility requires review of the claim “as a whole”.  It is my opinion that this adds to the importance of a claim preamble in the Section 101 analysis.  (Note that this is contrary to traditional claim analysis wherein the text of the preamble is typically ignored.)

Note that my suggestion for revised claim drafting does result in narrowed scope of claim protection.  This is a function of the increase claim specificity.  This may be remedied by drafting more, but varied, claims.

Note only should the purpose or focus of the claim be stated with more specificity, but the operative steps be stated in greater detail, thereby distinguishing the operative steps from the generic or conventional methodology or structure.  Note that the particular arrangement of software steps may constitute a technical improvement over the prior art methodology.  Care should be taken to clearly state and claim steps or structure that improve underlying technology.  For example, and using the facts of USR v Apple, you want to anticipate and remove the court (or examiner’s) ability to characterize your invention as “merely a collection of conventional data combined in a conventional way that achieves only expected results.”  Rather, you want to describe and claim your invention with sufficient specificity that it can be distinguished from conventional methods or structure.  Also that your method or structure achieves more than “expected results”.

My point includes that drafting claims should not be directed to the broadest language or scope, but rather narrowed to clearly highlight the distinction from the conventional or known technology.  Ideally, this drafting will show the distinct method or structure allows improved computer functionality (versus the computer being used merely as a tool to achieve a goal).

Conclusion:

The rise of challenges to patents (and patent applications) resulting from the increased focus on “abstract ideas”, results in the necessity of greater care in drafting patent claims.  These improved claim drafting steps may contravene traditional lessons of claim drafting, i.e., broad scope is better than narrow scope.

This shift in claim drafting clearly applies to inventions utilizing computer software or computerized method of doing business.  Referencing my earlier blog post of Creep of Patent Eligibility Goulash, this change in claim drafting may apply more broadly.

 

© David McEwing 2021