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Software Inventions Eligibility for Patenting

Software Inventions: Patent Eligible or Not?

A common question is whether attempting to patent a software invention in the U.S. is a futile task.  Given the long hours and arduous work that software engineers often put into their coding projects, the possibility of someone else copying their ideas is completely unacceptable to them.  Yet, software engineers often hear tidbits through various media outlets (e.g., news, websites, social media, etc.) about the difficulty of trying to patent their software inventions to stop such misappropriation.  

An important starting point is what the U.S. Patent & Trademark Office (“USPTO”) says in its own manual,[1] which provides guidance to its Examiners during the examination process of a patent.  In particular, the USPTO describes a particular instance of patent eligible subject matter for a software patent as “not simply the addition of general purposes computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts.”[2]

In other words, the USPTO does not take the position that all software inventions are automatically patent ineligible.  Whereas some software inventions may meet the patent eligibility requirements to be considered for a U.S. patent, others may not.

What factors determine which software inventions are deemed eligible for obtaining a patent and which are not?[3]  That is the real question that has led to the public perception of software inventions being difficult to patent.  The answer went from being somewhat straightforward to murky and complex.

The reason for such a shift was a ruling by the Supreme Court[4] that amounted to a seismic event in the software patent realm.  Even though that ruling dealt with the extreme use case of a software invention for automating a fundamental business practice (e.g., mitigating financial risk) that was typically, and capable of being, performed by humans, software patent applications are often rejected for being directed toward less extreme use cases.


The Supreme Court even acknowledged that it did not “delimit the precise contours” for this analysis.[5]  As a result, appellate and lower courts have been left trying to extrapolate guiding principles that can be applied to the not-so-extreme variations along the spectrum of software inventions.  Accordingly, a patent eligibility analysis may now involve a lengthy review of a large number of rulings with disparate rationales – each attempting to address a different use case.

At Patent Ingenuity, P.C., finding the overlap amongst the various rulings is emphasized to help clients try to achieve their software patent goals.  Given the uncertainty of which ruling, and corresponding rationale, will be applied by a Patent Examiner to a particular software invention, drafting a patent application at the outset to comply with as many of the various rulings as possible may be prudent.  

In summary, obtaining a software patent may be crucial for many software engineering companies but may also appear to be somewhat of a daunting task.  Obtaining the guidance of a registered patent attorney specializing in software patents at Patent Ingenuity, P.C. may be helpful in navigating through the maze of software patent eligibility.[6]   


[1] Manual of Patent Examining Procedure, § 2106.04(a)(I).

[2] Manual of Patent Examining Procedure, § 2106.04(a)(I) (referring to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1691-92 (Fed. Cir. 2016)).

[3] As this article is provided for informational purposes, the author is not providing legal advice with respect to the patent eligibility merits of any particular software invention in this article.  Legal advice for a particular software invention may be obtained by contacting the author directly.  

[4] Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1980 (2014).

[5] Alice Corp., 134 S. Ct. at 2356-57.

[6] The information provided herein is not intended to provide any guarantee, warranty, or prediction of success in obtaining a software patent.  Results can vary from client-to-client and project-to-project.


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